Ex Parte Mills et al - Page 4



          Appeal No. 2004-1966                                                        
          Application No. 09/683,703                                                  

          position for limiting rotational travel of the steering input               
          shaft.1                                                                     
               The examiner’s finding that the Hanger mechanism comprises a           
          steering input shaft in the form of gear post 10 and a female               
          receptacle in the form of the worm gear 11 is reasonable on its             
          face and is not disputed by the appellants.                                 
               With regard to the claim limitations calling for the female            
          receptacle to have at least one stop position for limiting                  
          rotational travel of the steering input shaft, the examiner                 
          submits that                                                                
               [f]irstly, the phrase “for limiting rotational travel                  
               of a steering input shaft” is merely intended use and                  
               presents no structural limitation.  Secondly the                       
               limitation “stop position” is not [a] physical object.                 
               A position is a location.  . . .  Any object will have                 
               a position.  The female receptacle of [Hanger], in the                 
               threaded portion of worm gear 11, inherently has a                     
               “stop position” when it stops [answer, page 4].                        
               As for the claim limitations calling for a steer-by-wire               
          steering system and a steering input shaft that is not                      
          mechanically linked to the steered wheels, the examiner,                    
          recognizing that the Hanger mechanism does not embody such a                

               1 The appellants’ specification indicates that “[a] steering           
          system which has no direct mechanical linkage between the                   
          steering wheel and the steered road wheels is commonly referred             
          to as a steer-by-wire steering system” (page 1).  Hence, the                
          first two claim limitations argued by the appellants are, in                
          essence, mutually dependent.                                                
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