Appeal No. 2006-3152 Page 7
Application No. 10/168,492
a claimed invention, we agree with the examiner that claim 18 recites a capability of a
device rather than the actual operation of the device. Appellants have not addressed this
position of the examiner. Since the examiner has raised a legitimate question about the
scope of claim 18 which has not been argued by appellants, we will accept the examiner’s
finding regarding the scope of claim 18, and we agree with the examiner’s position that
Umemoto teaches the invention of claim 18 when claim 18 is interpreted in this manner.
With respect to claims 19 and 34, which are argued together, appellants argue that
Umemoto fails to teach the part of the claimed invention that recites that the secondary
erasure radiation can be output onto the storage layer during the storage of information in
the storage layer. Appellants argue that in Umemoto the secondary erasing operation is
performed at a time immediately before a further X-ray image is recorded and not during
the recording of that image. Appellants also argue that there is no support for the
examiner’s assertion that the secondary erasure light in Umemoto is capable of being
output onto the storage layer during the recording of an image [brief, pages 10-11].
We will sustain the examiner’s rejection of claim 19 but not the rejection of claim
34. Claim 19 is not allowable based on its dependence from claim 18 for reasons
discussed above. Since claim 19 recites that the erasure radiation of the secondary
intensity can be output onto the storage layer during the storage of information in the
storage layer, it recites a capability, rather than an actual operation, for reasons also
discussed above. Therefore, we essentially sustain the rejection of claim 19 for the same
reasons discussed above with respect to claim 18. Since claim 34 depends from claim 30,
we will consider the rejection of claim 34 infra.
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