Ex parte HURST et al. - Page 4




          Appeal No. 1997-0900                                                        
          Application 08/371,039                                                      



          forth at pages 9 and 10 of the brief.  Like appellants, we do               
          not agree with the examiner's view that the last recited means              
          of claim 12 relating to the first and second compression modes              
          would have been reasonably taught or suggested to the artisan               
          within                                                                      
          35 U.S.C. § 103 among the collective teachings and suggestions              
          of Grotz and Ishiguro.  This feature relates to the embodiment              
          shown                                                                       
          in Figure 4 with the adder 52 and switch 2 in part as                       
          explained at page 7 of the brief.  The language of this                     
          portion of claim 12 requires some kind of switching element                 
          inherently to switch between compression modes to apply only                
          residues processed by                                                       
          the nonlinear element in one mode and apply a combination of                
          residues and predictive signals from the motion compensated                 
          compression means to the same motion compensation compression               
          means in a second compression mode, where neither the                       
          structure of Ishiguro's Figure 3 nor the structure of Grotz's               
          Figure 5 would have taught or suggested to the artisan this                 
          kind of approach.                                                           

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