Ex parte KOYANAGI et al. - Page 15




                 Appeal No. 96-2696                                                                                                                     
                 Application 08/167,415                                                                                                                 


                 underflow of data in a send buffer, which is not the purpose                                                                           
                 of any of the codes cited by the examiner.   Consequently, we               3                                                          
                 agree with appellants that Sun also fails to disclose or                                                                               
                 suggest the claimed eliminating means coupled to a receiving                                                                           
                 buffer to supply compressed image data to the receiving buffer                                                                         
                 after eliminating such invalid code.                                             We note that the                                      
                 examiner (Answer at 7), in addressing appellants' argument                                                                             
                 that the claim calls for eliminating the invalid code prior to                                                                         
                 decoding of the compressed image data, characterized this                                                                              
                 argument as inconsistent with the fact that the claim recites                                                                          
                 decoding apparatus comprising an eliminating means for                                                                                 
                 eliminating invalid code.  We do not agree.  The fact that the                                                                         
                 preamble recites decoding apparatus does not preclude the                                                                              
                 claimed eliminating means from removing invalid code from the                                                                          
                 compressed image data before it is decoded by the claimed                                                                              
                 decoding means, which receives the compressed image data from                                                                          
                 the claimed receiving buffer.                                                                                                          




                          3While such codes are used in the admitted prior art                                                                          
                 described in appellants' application, that prior art is not                                                                            
                 relied on in any of the rejections before us.                                                                                          
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