Ex Parte CHARNESKI - Page 4



          Appeal No. 1997-1131                                                        
          Application No. 08/395,119                                                  

          expressly or under the principles of inherency, each and every              
          element of a claimed invention as well as disclosing structure              
          which is capable of performing the recited functional                       
          limitations.  RCA Corp. v. Applied Digital Data Systems, Inc.,              
          730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.                   
          dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.             
          v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.              
          Cir. 1983), cert. denied, 469 U.S. 851 (1984).                              
               Our review of the record before us indicates that the                  
          Examiner, despite asserting the anticipatory nature of the                  
          disclosure of Bailey with respect to the appealed claims, has               
          never attempted to show how each of the claimed limitations is              
          met by the prior art.  Instead, the Examiner has made a vague               
          reference to Figure 1 of Bailey which illustrates a block diagram           
          of an X-Y matrix of light emitting devices and draws the                    
          conclusion as stated at page 2 of the Answer that:                          
                    “... one can readily draw or activate any number                  
                    of boxes filling the claimed requirements                         
                    from the display of Bailey et al.                                 
               We find such assertion to be totally lacking of any support            
          on the record.  Our review of Bailey indicates no disclosure of             
          the generation of symbols or digits of any kind, let alone the              
          specific arrangement recited in the claims.  We are not inclined            
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