Appeal No. 1996-3578 Page 5
Application No. 08/125,756
With respect to the claim limitation of automatically changing the scope of the scan
in claim 18, the Examiner states that “although, Isogai et al do not particularly teach the
correlation of magnification and scope, which is performed automatically, Isogai et al teach
the correlation is done manually, and ‘automatically’ is not given any patentable weight
since it does not distinguish the claimed structure over the prior art. “ (See Final rejection
at page 2.) Appellants argue that this statement by the Examiner is in error. (See brief at
page 7.) We agree with appellants. “For the reference to anticipate the invention, all of
the claim limitations must be met.“ In re Alul 468 F.2d 939, 943, 175 USPQ 700, 703
(CCPA 1972). Clearly, the Isogai reference does not teach all of the claim limitations.
Therefore, we will not sustain the lack of novelty rejection of claims 17, 18 and their
dependent claims 19-24. Claims 25 and 26 contain the corresponding claim limitations
concerning the scan speed and scan scope, therefore we will not sustain the lack of novelty
rejection of claims 25 and 26.
§ 103 Rejection
The Examiner sets forth the rejection under 35 U.S.C. § 103 with unsupported
statements as to how the skilled user of the system of DiPietro would have operated the
system with a magnified image and the control of the speed of the scan in some unstated
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