Appeal No. 1999-2795
Application 09/046,111
claims 2, 4, 5, and 7 fail to address the Examiner's
rationale (FR3) that the type of web is a matter of obvious
design choice. The Examiner's statement that claims 1-8
stand or fall together because the brief does not include a
statement that the claims do not stand or fall together and
reasons in support thereof (EA2) is in error. The claims do
not stand or fall together.
Claims 1-7
As to claim 1, the Examiner states (FR2): "Regarding
'crushed areas', the manner in which these areas or cracks
are created constitutes a method step which is given little
or no patentable weight in an apparatus claim."
Appellant argues that the claimed "crushed areas"
represent structure, not a method step (Br4-5).
The Examiner responds to arguments concerning both
claims 1 and 8 as follows (EA3-4):
[T]he specific manner in which "crushed areas" or
"cracks" are created constitutes a method step, which
is given little or no patentable weight in an apparatus
claim. . . . The only difference between the holes of
Smith and "crushed areas" or "cracks" of the claimed
invention lies in the manner in which they are
generated, not in their structural function. In fact,
both a crack and a hole have the same structural
function (i.e. enable light to pass through to detect
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