Ex parte JAMES L. NOVAK - Page 3




          Appeal No. 96-2194                                                          
          Application 08/042,292                                                      

          orientation for the sensor relative to the seam (Spec. at 7, line           
          47 et seq.).                                                                
                    Claim 1, which is the broader of the two independent              
          claims (claim 13 is the other independent claim), reads as                  
          follows:                                                                    
                         1.  Apparatus for tracking a feature on a                    
                    workpiece comprising:                                             
                         at least two pairs of electrodes disposed on a               
                    planar mount oriented parallel to the axis of the                 
                    feature and above the workpiece with one electrode in             
                    each pair operating as a transmitter of an electric               
                    field and the other electrode in each pair operating as           
                    a receiver of the field;                                          
                         means to drive each of the transmitting electrodes           
                    at a separate frequency;                                          
                         means to combine the signals from the receiver               
                    electrodes to provide information indicative of the               
                    position of the mount relative to the feature; and                
                         means to drive the mount in response to the                  
                    position information.                                             
                    The references relied on by the examiner are:                     
          Houskamp                           4,656,406      Apr. 7, 1987              
          Hüschelrath et al. (Hüschelrath)   4,792,755      Dec. 20, 1988             
                    Claims 1, 6-9, 13-15 and 17-19 stand rejected under               
          35 U.S.C. § 103 as unpatentable over Hüschelrath in view of                 
          Houskamp.  Appellant treats the rejected claims as standing or              
          falling together (Brief at 3) and specifically argues the                   
          limitations of only claim 1.  As a result, we will treat                    
          claims 6-9, 13-15 and 17-19 as standing or falling with claim 1.            


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