Appeal No. 1998-1571
Application No. 08/022,199
§ 103 as being unpatentable over Liu or Halliwell or Antoon in
view of the Japanese reference or Arima.
We cannot sustain this rejection.
As correctly argued by the appellants, the applied prior
art contains no teaching or suggestion of the groove formation
feature required by the independent claim on appeal. The
examiner urges that it would have been obvious to provide the
method of Liu, Halliwell or Antoon with this feature in view
of the Japanese reference. However, the method of the
Japanese reference is completely different from the respective
methods of the primary references (as well as the here claimed
method). For this reason, we perceive no reason and the
examiner proffers none for providing any of the primary
reference methods with the groove formation feature of the
Japanese reference method.1
With further regard to the appellants’ claimed groove
formation feature, the examiner makes the following comments
on page 5 of his answer:
1In fact, we agree with the appellants that Antoon’s
teaching at lines 52 through 58 in column 1 militates against
such a provision.
3
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