Ex parte GUTTAG et al. - Page 8




          Appeal No. 1996-3193                                                        
          Application 08/160,112                                                      

          Z = #X-Y# in Taniguchi to a running sum of absolute values of               
          the differences would have been obvious.                                    
               Appellants refer to the following language of claim 1:                 
                    conditionally either 1) adding said difference to a               
               running sum of the absolute values of the differences if               
               said status bit is said first digital state, or 2)                     
               subtracting said difference from the running sum of                    
               absolute values of the differences if said status bit is               
               said second digital state . . . .                                      
          Appellants argue that this "language of claim 1 requires that               
          only one of the two possible operations of (1) adding the                   
          difference and of (2) subtracting the difference is performed"              
          (Br5) and "specifically excludes the possibility that both the              
          adding and subtracting operations are performed" (Br5).                     
          Appellants argue that "[f]ollowing the teachings of Taniguchi               
          clearly results in computation of two results and the                       
          conditional discarding one of them" (Br6).                                  
               The Examiner responds that "[t]he claim language                       
          'comprising' does not exclude the possibility that both                     
          operations are performed and either one of the outcomes is                  
          selected conditionally" (EA6).  Appellants respond that "the                
          'either ... or' language excludes the possibility that the                  
          claim covers performing both the recited operations and                     
          selecting the indicated result" (RBr2).                                     
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