Appeal No. 1998-1695
Application No. 08/421,309
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejection, we make reference to the examiner's
answer (Paper No. 17, mailed Feb. 3, 1998) for the examiner's reasoning in support of the
rejection, and to appellants’ brief (Paper No. 15, filed Dec. 12, 1997) for appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of our
review, we make the determinations which follow.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). We find that the examiner has not provided a
teaching or convincing line of reasoning why one skilled in the art would have desired to
modify the teachings of Nishiyama with those of Kobayashi to achieve the invention as
recited in claim 1. Moreover, we agree with appellants that even if combined, the
combination would not teach the invention as recited in claim 1. Specifically, claim 1
requires “an arithmetic unit calculating rotation quantity of the spherical object on each axis
3
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