Ex parte MARCUS - Page 6




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




                                 Under the circumstances of this particular case, we                                                          
                REMAND the application to the examiner for the following                                                                      
                purposes:                                                                                                                     
                                 to consider and cite upon a FORM PTO-892 the patent to                                                       
                Wang et al specified above,                                                                                                   


                                 to assess the subject matter of all pending claims                                                           
                (claims 2, 4 through 6, 8, 14, 16 through 18, 25, 27, 28, 30,                                                                 
                33, 34, 36 through 42, and 52 through 61) in light of the newly                                                               
                discovered patent in conjunction with other known prior art,                                        2                         
                and to take appropriate action; and                                                                                           


                                 to take appropriate action on the “INFORMATION                                                               
                DISCLOSURE STATEMENT” (Paper No. 21) in accordance with 37 CFR                                                                
                §§ 1.97 and 1.98.                                                                                                             


                         2The office action dated August 12, 1993 (Paper No. 4)                                                               
                lists as attachments: 1. PTO-892 and 2. PTO-1449.  While the                                                                  
                referenced PTO-1449 is present in the application file, the                                                                   
                PTO-892 citing the art made of record by the examiner cannot be                                                               
                found.  We note the Leighton et al. patent (column 3, line 33                                                                 
                through 61) cited by appellant on the PTO-1449, and the indi-                                                                 
                cation by appellant in the present specification (pages 2                                                                     
                through 4) that both encryption and signal compression are known.                                                             

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