Appeal No. 96-3302
Application No. 08/160,119
doubles the size of the portion for each succeeding
repetition. Thus, the steps of claim 5 not only must be
performed repetitively, but the steps within each repetition
change as the size of the portion is doubled in successive
repetitions. The examiner’s only consideration of this
feature of the invention is to state that “Harmon teaches that
the size of the mask sections can be doubled” [answer, page 3,
underlining added] and, therefore, suggests the claimed
invention.
The examiner’s position with respect to claim 5 is
that the Harmon device could be made to perform the steps of
claim
5 and to repeat them as claimed even though there is no
specific teaching in Harmon to do so. For reasons which we
discussed above with respect to claim 1, the examiner’s
position is not sufficient to establish a prima facie case of
obviousness. Therefore, we do not sustain the rejection of
independent claim
5 or of claims 6-8 which depend therefrom.
Independent claim 9 does not refer to repetition, but
instead, recites the steps of forming, masking, rotating,
8
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