Appeal No. 96-1286
Application 08/259,360
output states. The appellants dispute that either Nissen or
Fuss discloses these features of the claimed invention.
Without clear findings for these claim elements, it cannot be
said that a sufficient factual basis has been established in
support of a rejection for obviousness. Insofar as these
claim features are concerned, the cited portions of Nissen and
Fuss do not speak for themselves in the absence of a
reasonable explanation by the examiner.
In response to the appellants’ assertion that neither
Nissen nor Fuss discloses the above-quoted features of the
claimed invention, the examiner again fails to make specific
factual findings with regard to the features at issue or
explain how they are found in the disclosure of Nissen or
Fuss. Instead, the examiner responds (examiner’s answer at 5)
by stating merely that "both Nissen et al. and Fuss teach the
well known capability of reducing the number of memory
elements by grouping identical (or redundant) data." The
problem with that approach, however, is that the claims do not
just broadly recite reducing the number of memory elements by
grouping identical data. Rather, the claims include numerous
specific claim elements or specific steps performed on these
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