Ex Parte SETO et al - Page 7



             Appeal No. 1998-2213                                                                                 
             Application 08/655,863                                                                               

             Kurimura’s disclosure that lack of normal vacuum is to be avoided                                    
             (col. 6, lines 51-52) would have fairly suggested, to one of                                         
             ordinary skill in the art, not only preventing lack of normal                                        
             vacuum by avoiding air leakage, but also doing so by using a                                         
             suction tube which provides sufficient suction, e.g., one which                                      
             is not clogged.                                                                                      
                                                   Claim 12                                                       
                    The appellants argue that the applied references would not                                    
             have suggested use of attracting state parameters to indicate at                                     
             least two abnormal states (brief, page 8).  Kurimura’s apparatus,                                    
             however, is capable of being used to indicate more than one                                          
             abnormal state, such as defects in the specimen slide, dust on                                       
             the specimen slide surface, and defects in the holding arm                                           
             (col. 6, lines 34-60).                                                                               
                                                   Claim 14                                                       
                    The appellants argue that Kurimura’s apparatus is not                                         
             capable of taking pressure measurements at two predetermined                                         
             times after the suction pad begins applying suction to the                                           
             analysis film, and comparing the suction pressure measurements                                       
             with predetermined values to determine a state of the suction pad                                    
             (brief, page 9; reply brief, pages 3-4).  Kurimura, the                                              

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