Ex parte BARBUR et al. - Page 6




          Appeal No. 1998-3339                                       Page 6           
          Application No. 08/614,459                                                  


          have been obvious to one of ordinary skill in the art at the                
          time of the invention to only sample rejected products for the              
          multivariate principal component analysis (PCA) because this                
          would allow one to use PCA to determine the leading causes of               
          the various defects encountered in whatever system the                      
          invention was being applied.”  (Id. at 4-6.)  The appellants                
          argue, "[t]his argument assumes that there is some motivation               
          in the prior art for sampling only rejected products to                     
          achieve an understanding of the cause of the reject.  The                   
          Examiner has shown no such motivation, other than that                      
          provided by Applicants' disclosure."  (Appeal Br. at 3.)  They              
          add, “[a]pplicants do not claim that the multivariate                       
          statistical method employed in the process is novel, only that              
          the application of the statistical method to analyze rejected               
          products resulting from a process using a set of reject                     
          classifications is new.”  Id. at 2.                                         


               “‘[T]he main purpose of the examination, to which every                
          application is subjected, is to try to make sure that what                  
          each claim defines is patentable.  [T]he name of the game is                
          the claim ....’”  In re Hiniker Co., 150 F.3d 1362, 1369,                   







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