Ex parte SATO et al. - Page 7




          Appeal No. 97-0903                                                          
          Application No. 08/266,865                                                  


          resulted from an obvious combination of the teachings of the                
          six cited references.                                                       
          Appellants argue that the “causing” and “exposing”                          
          limitations recited in the last paragraph of claim 1 are                    
          missing from all of the patents relied on by the examiner, and              
          therefore, there is no teaching or suggestion of the “print                 
          information set means” as recited in claim 1 [brief, page 6].               
          We note that the references cited by the examiner                           
          basically fall into one of two groups of teachings.  Taniguchi              
          ’201, Taniguchi ’006 and Hata all teach the concept of placing              
          a code on a frame of film to direct a printer how to print the              
          exposed film.  Taniguchi ’201 places a reference mark (12)                  
          outside the exposed portion of the film frame [Figure 9].                   
          Taniguchi ’006 places a plurality of marks (CO , CO , CO ,1    2   3                    
          etc.) outside the exposed portion of the film frame [Figure                 
          14].  Hata places a reference mark (38a) outside the exposed                
          portion of the film frame [Figure 10].  Thus, each of these                 
          three references teaches the placement of a machine-readable                
          code outside the exposed area of the film frame.                            
          Hattori, Lapeyre and Itabashi all teach the concept of                      
          exposing information to be printed on an exposed portion of                 
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