Ex parte MARCUS - Page 5




          Appeal No. 95-5039                                                          
          Application 07/979,018                                                      



          closure.  More specifically, the specification (page 3, lines 18            
          through 21) sets forth that a second signal is encrypted, which             
          second signal is derived at least in part from a first signal               


          representative of the image.  As subsequently stated in the                 
          specification (page 4, lines 16 through 24), the second signal              
          (encrypted) includes a compressed form of the first signal.  As             
          indicated, the claim language at issue, understood in light of              
          the specification, makes it clear to us that the encrypted signal           
          includes a compressed form (reduction in bytes) of the first                
          signal (representative of the image).  To read the compressed               
          representation of claim 38 as simply a form of encryption would             
          be inconsistent with, rather than consistent with, appellant’s              
          disclosure which describes these terms separately and distinctly,           
          one from the other (specification, pages 6 and 7; compressor                
          module 16 and encrypter module 20 of Figure 1).  See In re Bond,            
          910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).                   


                                 REMAND TO EXAMINER                                   
                    U.S. Patent No. 5,471,533 to Wang et al (column 3,                
          line 51 to column 4, line 35) has come to our attention.  A copy            
          of this patent is appended to our opinion.                                  
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