Ex parte HORIGOME - Page 5




          Appeal No. 1996-0774                                       Page 5           
          Application No. 08/048,117                                                  


                         Anticipation of Claims 1, 5, and 6                           
               Regarding the anticipation of claims 1, 5, and 6, the                  
          appellant argues that Fumiaki “does not teach or suggest that               
          ROM 16 or any of its other elements generate a reciprocal of                
          the total light amount.”  (Appeal Br. at 7-8.)  He further                  
          argues that the reference’s disclosure “is not sufficient to                
          teach or suggest that ... this reciprocal is used as a digital              
          input to a D/A converter as claimed in claim 1.”  (Reply Br.                
          at 5.)  In response, the examiner opines, “either signal 20 is              
          a reciprocal of signal 13 or at some point in element 18 it                 
          becomes reciprocal, dependent on the particular implementation              
          of element 18.  At some point it must be reciprocal in order                
          to normalize signal 19.”  (Examiner’s Answer at 5.)                         


               We cannot find that Fumiaki teaches the reciprocal data                
          of claim 1.  A prior art reference anticipates a claim only if              
          the reference discloses expressly or inherently every                       
          limitation of the claim.  Absence from the reference of any                 
          claimed element negates anticipation.  Rowe v. Dror, 112 F.3d               
          473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).                            









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