Appeal No. 1998-0496
Application 08/356,966
indicated that the “run length plus one” of the claims is met by
the overflow in Saito [answer, page 3] or by the non-zero
amplitude digits of Saito [id., page 6].
We base our decision essentially on the arguments presented
by appellant in the briefs. We agree with appellant that neither
the overflow in Saito nor the non-zero digits in Saito are
combined with the run length in Saito to generate sequential
updated addresses which meet the limitations of claims 1 or 7.
The examiner’s mere assertion that the recitations of claims 1
and 7 are fully met by the disclosure of Saito is simply
unsupported by the Saito disclosure.
Since we agree with appellant that every limitation of
claims
1 and 7 is not fully disclosed by Saito, we do not sustain the
examiner’s rejection of claims 1 and 7 under 35 U.S.C. § 102.
We now consider the rejection of claims 2-6 and 8-11 under 35
U.S.C. § 103 as unpatentable over the teachings of Saito and
Fukuda. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073,
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