Ex parte NAGANO et al. - Page 3




          Appeal No. 1997-4447                                                        
          Application No. 08/309,907                                                  

          do not distinguish, as appellants apparently urge us to do,                 
          the teachings of Koyama and the subject matter of the claims                
          on appeal on the mere basis of labels only.  Our original                   
          opinion did not indicate that the tracking error signal was                 
          equivalent to the teaching in Koyama of an eccentricity                     
          component but merely that the teachings of the determination                
          of the tracking error signal was a determination of a kind of               
          eccentricity to the extent broadly recited in the claims on                 
          appeal.                                                                     
          The determination of the tracking error signal of                           
          Koyama, as we outlined in our original opinion, provides a                  
          determination of a calculated amount or extent of eccentricity              
          to the extent recited in the claims on appeal.                              
          The examiner clearly found the subject matter of the                        
          present claims on appeal to be unpatentable within 35 U.S.C.                
           102 in contrast to those claims the examiner has allowed.                 
          Those allowed claims are 1-8, 11, 13 and 16.  The examiner has              
          thus parsed the claims to define a point of demarcation                     
          between allowable and unpatentable subject matter.                          
          In view of the foregoing, appellants’ request for                           
          reconsideration is granted to the extent that we have in fact               

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