Ex Parte Hoskins et al - Page 6



          Appeal No. 2004-0292                                                        
          Application 09/726,369                                                      


               Since it is already recognized in the Specification as a               
          part of the prior art and separately taught implicitly within the           
          firmware control of the microprocessor which, in the second                 
          paragraph at page 121 of AHP, controls the actual sector genera-            
          tion hardware, it appears to us to be clear that the calculation            
          aspect of disputed clause (a) of representative claim 1 on appeal           
          and the constructing clause that succeeds it form an entire skip            
          mask to the extent necessary for a given track since it does so             
          for the entire disk pack itself.  The use of skip mask bit                  
          pointers and the implied skip mask pointer register to the extent           
          recited in independent claim 16 on appeal is clearly indicated              
          and noted by the examiner in the Answer in Figure 2 of AHP at the           
          top of page 122.  The microprocessor is again stated in the first           
          paragraph at page 122 to control the initialization and the                 
          actual data transfer operations.                                            
               To the extent appellants argue that there are no tracks per            
          se recited or noted in AHP, we recognize this from our study of             
          it.  On the other hand, at this point the rule that anticipation            
          requires that every element of a claim appears in a single                  
          reference accommodates situations where the common knowledge of             


                                          6                                           




Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007