Ex Parte MERRYMAN et al - Page 11




              Appeal No. 2001-2692                                                                   Page 11                 
              Application No. 08/789,001                                                                                     


              missing descriptive matter is necessarily present in the thing described in the reference,                     
              and that it would be so recognized by persons of ordinary skill.’"  In re Robertson, 169                       
              F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (quoting Continental Can                               
              Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991)).                              
              Here, because a flip-flop "has two outputs," M. Morris Mano ("Mano") Computer                                  
              System Architecture 22 (3d ed. 1993) (emphasis added) (copy attached),3 and "[t]he                             
              difference among various types of flip-flops is in the number of inputs they possess,"                         
              id. (emphasis added), we find that inputs and outputs are necessarily present in the flip-                     
              flop of the reference.  Therefore, we affirm the anticipation rejection of claims 2, 28, and                   
              29 by Modarres.                                                                                                
                                                                                                                            
                      Third, observing that claim 30 "further limits the macro cells to include bi-                          
              directional cells," (Appeal Br. at 41), the appellants argue, "[t]he prior art of record does                  
              not contain this combination."  (Id.)  For its part, claim 30 further specifies in pertinent                   
              part the following limitations: "one or more of the number of macro cells are bi-                              




                      3Although references cannot be combined for anticipation, additional references                        
              may be used to interpret an anticipatory "reference and to reveal what it would have                           
              meant to one of ordinary skill at the time the invention was made."  Studiengesellschaft                       
              Kohle, m.b.H.v. Dart Indus., Inc., 726 F.2d 724, 726-27,  220 USPQ 841, 842 (Fed. Cir.                         
              1984).  Here, we use Mano to interpret Modarres and to reveal what the latter reference                        
              would have meant to one of ordinary skill at the time the invention was made                                   







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