Ex parte EDWARDS et al. - Page 10




              Appeal No. 98-1396                                                                                       
              Application 08/300,666                                                                                   


              claimed ROMs.  Moreover, the motivation set forth by the Examiner is merely a conclusion                 
              without supporting reasoning.  (See Answer at page 7.)                                                   
                     Alternatively, assuming arguendo that the combination of references is proper, we                 
              find that the combination of references do not teach the common elements as set                          
              forth in the language of the independent claims.  The Examiner has stated that "Ohuchi                   
              does not disclose the specific structure/design including a second ROM, a counter and                    
              a latch."  (See Answer at page 6.)  We do not find even a first ROM in Ohuchi which is                   
              "input by the input means for storing pixel values at prescribed addresses."  (See claim 23,             
              paragraph 3.)  Ohuchi merely discloses the use of the ROM for the rotation and packing of                
              the output data.  (See col. 2, lines 29-30.)   Furthermore, Ohuchi does not disclose the use             
              of prior pixels by "a second ROM for similarly storing previous pixel values" nor the                    
              combination of the "[l]atch means to which the ROMs are output" and                                      
              "wherein [a]dder means is interposed between the ROMs and said [l]atch means to                          
              execute addition mapping."  (see Claim 23.)                                                              


                     Hackett does not provide these missing teachings from Ohuchi.  Regarding the                      
              correlation of Hackett to limitations in the claims, the Examiner has stated that "the scaler            
              means also includes a first ROM input by [an] input means for storing pixel values at                    
              prescribed address (Figure 5:8); a second ROM for similarly storing previous pixel values                


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