Appeal No. 95-5032
Application 08/189,276
of 35 U.S.C. § 112. According to appellants, the timing signal generating circuitry of the invention is
depicted in Figure 8 of the application, and the recitations of these claims must be construed to cover
the circuitry of this figure and its corresponding description in the specification [brief, pages 18-19].
Appellants correctly point out that neither Taguchi nor Figure 3 of this application shows any circuitry
for generating clock signals. Appellants conclude that there can be no basis for concluding that Taguchi
discloses the same or equivalent circuitry when there is no circuitry disclosed at all for performing the
recited functions. The examiner has either overlooked or ignored this argument by appellants because
the answer is silent on this issue.
There is no evidence in this case that the claim interpretations mandated by the last paragraph of
35 U.S.C. § 112 have ever been considered by the examiner. On this record, it appears to us that the
following two questions must still be answered: (1) what structure should be read into the claims
corresponding to the timing signal generating means? and (2) does the applied prior art suggest the
obviousness of this structure?
Appellants have answered the first question by asserting that the structure of Figure 8 of the
application must be read into the claims in interpreting claims 4-8 and 18-22. Appellants have
presented a reasonable argument as to why the timing signal generating means of these claims cannot be
supplied by the missing disclosure in each of the applied prior art references. The examiner has failed
to respond as to how the applied prior art can be interpreted to meet the invention of claims 4-8 and
10
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