Appeal No. 1999-1286
Application No. 08/567,950
Hidaka4, Japanese patent publication 3-237,738, published October 23, 1991.
The examiner’s rejections
Rejection 1. The examiner has rejected claims 5 and 6 as lacking an adequate
written description in the specification as filed of the subject matter claimed.
Rejection 2. The examiner has rejected claims 1–4, 16–20, and 23 as
unpatentable under 35 U.S.C. § 103(a) over the combined teachings of Abe and Shils.
Rejection 3. The examiner has rejected claims 5, 6, 21, and 22 as unpatentable
under 35 U.S.C. § 103(a) over the combined teachings of Abe, Shils, and Hidaka.
We refer the reader to Appellant’s brief and reply brief and to the examiner’s
answer for a full exposition of their respective positions. (We decline to address
Appellant’s “Request to Reopen Prosecution” (Reply Brief at 1–2) as moot in view of
our decision. In any event, such a request should have been made by way of petition to
the Technology Center Director. (MPEP § 1002.02(c)-8 (8th Ed., August 2001.))
B. Discussion
Rejection 1
Claim 5 requires that the marking diameter at (at least) one marked location
differ from the marking diameter at another marked location. Claim 6 depends on claim
5 and specifies a range of marking diameters. The examiner argues that although the
specification describes a variable beam diameter, there is no written description of a
4 A USPTO translation is of record, a copy of which accompanies this decision.
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