Appeal No. 1998-1441
Application No. 08/294,779
examiner has not advanced any reason for the proposed modification, but has based the
proposal on an unfounded assertion of equivalence.
Since the references applied are not sufficient to show prima facie unpatentability
of claim 28, we do not sustain the rejection of that claim. On page 25 of the Brief,
appellants point out the relevant language of claim 28, but also allege that the invention “as
described” in claims 58 and 59 is not taught by the prior art. However, claims 58 and 59
are not commensurate in scope with claim 28. Claim 58 refers to a polygonal mirror 412
(Fig. 4; see also Brief, page 6, line 3 et seq.). Tsukada suggests a polygonal mirror 3
(Fig. 1) as part of a first deflector means. We sustain the rejection of claim 58. Claim 59
does not require any movement of the “second deflector means,” and is fairly descriptive of
deflection of the light beam by mirror 5 in Tsukada. We also sustain the rejection of claim
59.
Since appellants do not provide separate arguments for patentability of the
dependent claims subject to the ground of rejection applied against the independent claim,
except for those that we have noted, we sustain the rejection of claims 3, 4, 13-17, 21-24,
26, 27, 38, 47, 48, 52, 55, 58, 59, 61, and 62. See 37 CFR § 1.192(c)(7). We do not
sustain the rejection of claim 28.
For the rejection of claims 30-33, the examiner adds Shibata to the basic
combination of references. Appellants submit separate arguments for claims 30 and 31
on page 28 of the Brief. We agree that the references do not show obviousness of the
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