Ex parte INAMORI et al. - Page 6




          Appeal No. 1996-2369                                       Page 6           
          Application No. 08/191,723                                                  


          skilled of the scope of the invention, 35 U.S.C. § 112 demands              
          no more.  Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870,                  
          875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993).  Here, when read                
          in light of the specification, one skilled in the art would                 
          understand the following features of the appellants’                        
          invention.  The claimed “address data of the first number of                
          bits” could specify a display position that is outside the                  
          LCD’s effective address area 59.  Without correction, this                  
          specification may result in an undesired display within the                 
          effective address area.  Fig. 1, (0,0).  The invention                      
          corrects the bits of the address data to be within the                      
          extension address area 11 of the LCD 11, which is outside the               
          effective address area.                                                     


               In summary, one skilled in the art would understand the                
          bounds of the claim 1 when read in light of the specification.              
          We demand no more.  Therefore, we reverse the rejection of                  
          claim 1 under 35 U.S.C. § 112.  Next, we address the                        
          nonobviousness of claims 1, 3, and 5-8.                                     


                       Nonobviousness of Claims 1, 3, and 5-8                         







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