Appeal No. 2004-0823
Application No. 09/555,391
invention [reply brief, page 10].
We will not sustain the examiner’s rejection of independent claim 32. We agree with
appellants that the teachings of Fang are essentially the same as the teachings of Ohhashi.
Therefore, the proposed combination of Fang and Novik fails for the same reasons discussed
above with respect to the rejections based on Ohhashi and Novik.
Since we have found no basis for combining the teachings of Fang and Novik, and since
none of the additionally applied references overcome this deficiency, all rejections which rely on
this combination of references are also improper. Therefore, we also do not sustain the
examiner’s rejection of claims 33-37.
We now consider the rejection of claims 60-62 as being anticipated by the disclosure of
Novik. Anticipation is established only when a single prior art reference discloses, expressly or
under the 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 Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he reads the claimed invention on the disclosure of
Novik [final rejection, pages 2-3, incorporated into answer at page 5]. With respect to
independent claim 60, appellants argue that although Novik does calculate a compression ratio
from a user provided quality factor Q, such calculating does not constitute an automatic selection
10
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007