Appeal No. 2001-0476
Application No. 08/768,231
bursts. Hence, we find that all of the servo bursts P, Q, A and
B contain the servo identification and as such, the servo
identification is not limited to one set or the other as is
argued by Appellant. Therefore, we agree that claims 46 through
53 are properly rejected under 35 U.S.C. § 112, first paragraph.
We will therefore sustain the Examiner's 35 U.S.C. § 112,
first paragraph rejection of claims 46 through 53. However, we
have decided to vacate the Examiner's 35 U.S.C. § 103 rejections
of claims 1, 3, 5 through 7, 13 through 16, 21 through 24 and 27
through 45 and remand the case for further proceedings,
consistent with the discussion supra, rather than reverse the
Examiner's rejection or enter a new ground of rejection under
37 CFR § 1.196(b). As outlined supra, the Examiner needs to
determine the scope of "each" of the claims and further determine
the meaning of the "servo identification." Next, the Examiner
must pick the most relevant prior art references and then the
Examiner must set forth an "unambiguous ground of rejection." As
such, we have concluded that the Moon reference, U.S. Pat. No.
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