Ex Parte WOODS - Page 3




                  Appeal No.  2002-1384                                                                                                                   
                  Application No. 09/330,311                                                                                                              


                  compensation means that compensates for the errors in radial locations of servo fields by using the                                     
                  second integral of the coil input signal picked off at 30 to determine compensation values 35/36                                        
                  which are added to a subsequent PES [position error signal] at 24 after a one revolution delay                                          
                  through 37.”                                                                                                                            
                           Appellant argues (brief, page 7) that “[c]laims 11 and 12 are each written in accordance with                                  
                  35 U.S.C. § 112, sixth paragraph, and the proper examination of these claims requires an                                                
                  identification of the corresponding structure, material or acts in the specification, and equivalents                                   
                  thereof, that carry out the functions recited by the claims.  In re Donaldson Inc., 16 F.3d 1189 (Fed.                                  
                  Cir. 1994)(en banc).”  In response to the examiner’s analysis of Wallis, appellant states (brief,                                       
                  pages 11 and 12) that:                                                                                                                  
                                    First, the Applicant agrees with the Examiner that Wallis ‘622, FIG. 1,                                               
                           provides current signals at node 30 which are twice integrated at block 31 to form an                                          
                           actuator position signal.  Col. 3, line 65 to col. 4, line 10; col. 6, lines 5-15.                                             
                                    However, Wallis ‘622 fails to teach using the second integral of current to                                           
                           determine compensation values which are added to position error samples, as                                                    
                           covered by the structure of claim 11 (see FIG. 8 of the present application).  Rather,                                         
                           Wallis ‘622 adds compensation values from FIFO 37 to current command signals at                                                
                           summing junction 24.  See col. 4, lines 15-19; col. 6, lines 38-49.                                                            
                  Appellant concludes (brief, page 13) that “Wallis ‘622 is not an equivalent under § 112, ¶6 . . .”                                      
                  because:                                                                                                                                
                                    Wallis ‘622 performs . . . in a substantially different way, . . . calculates a                                       
                           double integral of current, sums this with the raw PES (summing junction 34), and                                              
                           double differentiates this output to provide current correction signals (current                                               
                           profile).  This provides a substantially different result - compensated current                                                
                           command signals instead of compensated PES signals.                                                                            

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