Ex parte IWASHITA - Page 4




                Appeal No. 1999-1578                                                                                                    
                Application 08/764,508                                                                                                  


                deviation or rotating the servomotor in the direction opposite to the first direction to release the elastic            

                deformation of said machine  tool.  We note that Appellant's independent claim 1 recited step "(d)                      

                setting a predetermined positional deviation having a direction opposite to said first direction in said                

                error register when said abnormal load is detected."  Furthermore, we note that Appellant's                             

                independent claim 1 recited step "(e) rotating the servomotor in the direction opposite to the first                    

                direction by a predetermined rotational amount corresponding to said predetermined positional                           

                deviation and then stopping the servomotor, to release said elastic deformation of said machine tool."                  

                We find similar language in Appellant's claim 4 in steps (f) and (g).                                                   

                        On page 5 of the answer,  the Examiner responds to Appellant's arguments by stating that Eto                    

                discloses in embodiment 2 the step of reversing for a select amount determined by the formula (1) on                    

                column 4.   On page 6 of the answer,  the Examiner argued that although it is true that Eto does not                    

                disclose that the reason for reversal is to release elastic deformation of a machine tool, the claimed                  

                exact intended use is not required to make this rejection.                                                              

                        Appellant responds to the examiner's answer on page 4 of the reply brief stating that "the Eto                  

                formula is not predetermined but is variable."   Appellant further responds that claims 1 and 4 positively              

                recite a step of rotating the servomotor in the direction opposite to the first direction by a                          

                predetermined rotational amount to release the elastic deformation of the machine tool.  Appellant                      

                argues that this claim language cannot be ignored by the Examiner.                                                      


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