Appeal No. 1998-0146
Application 08/407,058
to combine two compositions each of which is taught by the
prior art to be useful for the same purpose, in order to
form a third composition which is to be used for the very
same purpose. . . . [T]he idea of combining them flows
logically from their having been individually taught in the
prior art.").
Appellants argue that Sugano teaches away from the
proposed combination because one of the objectives of Sugano
is to provide a cleaning method and device that does not
require special software and the modification of Yamamoto
would require software to command the lens to move up and
down, incurring additional expense (Br13; Br18).
The Examiner responds that the argument is unpersuasive
because the appealed claims are not directed to specific
software control steps (EA8). Appellants argue that this
reasoning is improper (RBr2-5). The Examiner further states
that "Sugano et al is relied upon only to show that moving
the objective lens toward and away from the cleaning disk is
known in the prior art and one having ordinary skill would
have realized the advantages of having such movement and
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007