Appeal No. 1997-3670
Application No. 08/541,799
resolved is whether there is adequate support for the programming of the compensator “for
implementing a difference equation..,” as recited in independent claim 23. It is our view
that adequate support for this claim limitation is provided by the disclosure at pages 23-24
of the original specification since a typical difference equation is described thereat
wherein it is described that the “algorithm itself can be changed” and that a RAM is
“programmable to vary the coefficients [of the difference equation] as necessary.”
Accordingly, it is clear that the programmable digital compensator is employed for
implementing the difference equation.
For the foregoing reasons, we will not sustain the rejection of claims 1-38 under 35
U.S.C. § 112, first paragraph.
We now turn to the rejections under 35 U.S.C. § 102.
We will not sustain any of the rejections under 35 U.S.C. § 102 because the
examiner has clearly failed to present a prima facie case of anticipation regarding the
claimed subject matter.
Although given ample opportunity to do so and faced with a request in our remand
of Nov. 18, 1999 to show specific correspondence of the reference disclosures to the
instant claimed elements if the prior art rejections were maintained, the examiner has
clearly failed to show how every claimed element is met by the applied references
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