Appeal No. 1998-2500
Application No. 08/276,154
The examiner states that “as claimed, the disclosed structure cannot perform the
function claimed.” (See answer at page 4.) The examiner’s basis for questioning the ability
of the disclosed invention to carry out the claimed invention with respect to the new matter
rejection is unclear. The examiner reads the claim limitations “on steps 64, 66, 68, and 74 of
the initial track routine,” but the examiner does not discuss how this is related to the alleged
new matter. Therefore, this argument is too unclear to form the basis of a proper rejection
under 35 U.S.C. § 112, first paragraph. Therefore, the examiner has not met his burden of
setting forth a prima facie case, and we cannot sustain the rejection.
35 U.S.C. § 112, SECOND PARAGRAPH
The examiner maintains that the claim language “‘can begin’ does not define the
structure defined in the specification” and when these operations “can” take place. (See
answer at page 4.) The examiner further maintains that the structure of claim 17 provides no
instructions to the formatter or servo controller, and it is unclear what is meant by “subsequent
instructions.” Appellants argue that in light of the specification, as discussed with respect to
the issue of support of the amendment to claim 17, the claim language is clear and distinct
such that data transfers can begin anytime after the appropriate signals are received from the
track change logic. (See brief at pages 19 and 20.) We agree with appellants that the
language of claims 17-20 is sufficiently clear to particularly point out
and distinctly claim the subject matter which appellants regard as the invention. Therefore,
we cannot sustain the rejection of claims 17-20 under 35 U.S.C. § 112, second paragraph.
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