Appeal No. 1999-1694
Application No. 08/474,903
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 Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The relevant portion of independent claim 18 (similarly
recited in independent claim 24) requires “ . . . a controller
which controls the selection of image data sensed by said image
sensor, on the basis of said information read by said information
reader.”
With respect to claims 18 and 24, the Examiner has indicated
(Answer, page 3) how the various limitations are read on the
disclosure of Wada. In particular, the Examiner points to the
illustration in Figure 13 of Wada along with the accompanying
description of the illustrated controller sections 102 and
104 beginning at column 9, line 29.
Appellants’ arguments in response (Brief, pages 5 and 6;
Reply Brief, page 2) initially assert that Wada lacks a
disclosure of the selection of image data sensed by the CCD image
sensor since the sequence controller 102 referred to by the
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