Ex Parte LEE et al - Page 4




          Appeal No. 2001-2593                                                        
          Application No. 09/074,197                                                  

          conclude that latch registers 43 and 51 must be the same as latch           
          registers 24-29 and are, therefore, clocked (brief, page 6).                
               In response, the Examiner points out that the latches in               
          Goldschmidt do delay the input signals by a predetermined amount            
          and are unclocked since no clock signals are disclosed (answer,             
          page 5).  The Examiner further argues that the fact that the                
          latches are described as “gated” does not mean that they are                
          clocked unless they are gated by a clock signal, which is not               
          disclosed in Goldschmidt (id.).                                             
               A rejection for anticipation under section 102 requires that           
          the four corners of a single prior art document describe every              
          element of the claimed invention, either expressly or inherently,           
          such that a person of ordinary skill in the art could practice              
          the invention without undue experimentation.  See Atlas Powder              
          Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947                
          (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d           
          1671, 1673 (Fed. Cir. 1994).                                                
               After reviewing Goldschmidt, we agree with Appellants’                 
          assertion that the claimed unclocked delay elements, are not the            
          same as the latch registers disclosed in the reference.                     
          Goldschmidt describes an adder for generating the final sum for a           
          plurality of simultaneously applied operands (abstract and Col.             

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