Ex Parte SCHULTZ et al - Page 6



          Appeal No. 2003-0739                                                        
          Application No. 09/319,763                                                  

          selection of one data reduction function “inhibits” the non-                
          selected function.                                                          
               It is our view, however, that even assuming, arguendo, that,           
          as asserted by the Examiner, selection of one of two functions              
          necessarily means inhibition of the non-selected function, the              
          specific claim language of independent claims 1 and 6 requires              
          that the recompression network be inhibited when the subsampling            
          network is activated.  We find no disclosure in Canfield that               
          would satisfy this claim limitation since the recompression                 
          network in Canfield is always active.  While portions of                    
          Canfield’s disclosure suggest that in certain situations the                
          subsampling network can be used together with the recompression             
          network to achieve increased data reduction, there is no                    
          disclosure by Canfield of using the subsampling network without             
          the recompression network.                                                  
               We note that it is proper for an Examiner to consider, not             
          only the specific teachings of a reference, but inferences a                
          skilled artisan might draw from them.  It is equally important,             
          however, that the teachings of prior art references be considered           
          in their entirety.  See In re Preda, 401 F.2d 825, 826, 159 USPQ            
          342, 344 (CCPA 1968); W.L. Gore & Associates, Inc. V. Garlock,              
          Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 311 (Fed. Cir. 1983),              
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