Appeal No. 1999-1286
Application No. 08/567,950
method that includes changing the diameter of the marking beam while marking a
plurality of locations on the same circuit. (Answer at 5.) Appellant argues that the
present claim is supported by original specification at page 8, third through fifth
paragraphs, describing optics and methods to change the focus size by either moving
the focusing lens or changing the relative positions of the circuit and the collimation
device, in combination with original claim 5, which recited “the radiation is focused in
such a way that a marking diameter is variable. (Brief at 18–19.) Appellant argues that
claim 5 as amended is appropriate “because there is a description in the original
specification (including claim 5) directed both to varying the diameter of the mark and to
marking at a plurality of locations.” (Brief at 19, ll.18–19.)
While Appellant is correct that the original specification describes both varying
the diameter of the mark and marking at a plurality of locations, the examiner is also
correct that the combination of these two possibilities is not expressly described as a
distinct process invented by Appellant. Thus, we need to consider the original
specification, including the original claims as well as the written disclosure and the
drawings, to determine whether that evidence describes “the invention, with all its
claimed limitations, not that which makes it obvious.” Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) (quoting Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563–64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
As the Lockwood court emphasized, “[a]lthough the exact terms need not be used in
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