Ex Parte ITOH et al - Page 6




          Appeal No. 2003-0965                                                        
          Application No. 09/030,829                                                  


          make and use the invention commensurate in scope with these                 
          claims.                                                                     
               The question before us is, what would Appellants'                      
          specification have taught one having ordinary skill in the art?             
          To answer this question we find the following facts:                        
               1.   Appellants' specification, page 25, lines 29-30, states           
                 that, "the timing of outputting the signal ACK can be set            
                 continuous . . . for each word."                                     
               2.   Appellants' specification, page 33, lines 19-33, shows            
                 that a "word" is equivalent to a "read data" as found in             
                 claim 1.                                                             
               3.   The specification, page 21, lines 29-30, states that,             
                 "the HDC outputs the response status signal to the MCU               
                 for each access."  We read "access" as "read data access"            
                 or "word access" since the FIFO at line 30 is word based             
                 (see line 25).                                                       
               4.   The specification, page 22, line 2, states that, "[t]he           
                 response status signal is generated for each access."                
                 Again we read "access" as "read data access" or "word                
                 access."                                                             
               5.   The specification, page 22, lines 9-10, states that,              
                 "the response status signal is applied to the MCU upon               
                 each data transfer."  We read, "transfer" as "word                   
                 transfer."                                                           
               6.   The specification, page 33, lines 21-24 and 29-32,                
                 shows that in the continuous access method (see line 5)              
                 the timing of the response status (ACK) signal is                    
                 discrete for each read data.                                         
               We find that nowhere in Appellants' specification, except              
          for 1 above, is there anything about "the timing of the output of           
          the response status being continuous for each read data."                   


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