Appeal No. 96-2953
Application 08/258,565
having an entrance pupil size which is within D-2g8/p” recited
in claim 1, “said beam having an angle 2 relative to a normal
to said movable diffraction plate so that sin(2)=±8/p” recited
in claim 6, and “said optical detector comprises a photosensor
arranged at a position distant from the fixed and movable
diffraction plates by D/28-g or more in a region which is
within D-2g8/p around the optical axis” recited in claim 26.
The Examiner responds that Appellants’ argument is
based on “intended results”, not positive limitations. We do
not agree, the claim limitations noted above are clearly
positive limitations. The Examiner responds further:
The examiner has used a[n] inherent
statement, not an obviousness statement,
therefore an obvious argument is
irrelevant. Secondly, the examiner feels
that a skilled artisan would find this
inherent in the reference and the applicant
has failed to prove, with evidence and not
conclusionary statements, that this is an
unexpected result since it has been held
that discovering an optimum value of a
result effective variable involves only
routine skill in the art. (Answer at pages
4 and 5.)
We do not agree with the Examiner on both counts.
First, if the prior art reference does not expressly set forth
a particular element of the claim, that reference still may
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007