Ex parte HONG et al. - Page 7




          Appeal No. 1997-0594                                                        
          Application No. 08/448,134                                                  

          drilling.  Further, on page 8 of the brief, Appellants assert               
          that Bartel teaches that the sensors should be mounted above                
          the drill bit and does not suggest that the sensors be placed               
          on the transverse face of a drill bit.  Finally, Appellants                 
          assert on page 10 of the brief, that neither Blondeau nor                   
          Piety teach or suggest a sensor on the bit face which causes                
          emission and reception of signals with respect to a zone                    
          uninvaded by drilling fluids.                                               


               Before turning to the references applied, we must analyze              
          the claims.  In analyzing the scope of the claims, office                   
          personnel must rely on the Appellant's disclosure to properly               
          determine the meaning of terms used in the claims.  Markman v.              
          Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321,               
          1330 (Fed. Cir.) (en banc), aff'd, 116 S. Ct. 1384 (1996).  We              
          find that the scope of claims 1 and 11 includes a sensor                    
          mounted on the face of the drill bit which emits                            
          electromagnetic signals into the earth formation ahead of the               
          drill bit and receives the signals which are reflected off of               
          the formation.  Claim 1 contains the limitation “a sensor                   
          mounted in said bit body and adjacent said transverse face in               

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