Appeal No. 2002-1384
Application No. 09/330,311
In view of the foregoing, the anticipation rejection of claim 12 is sustained.
With respect to the broadly recited “control means for controlling the position of the head
with respect to the disc” in claim 11, appellant argues (brief, page 10) that the corresponding
structure for performing this function is “the servo circuit 148 [Figure 2] with a DSP [digital signal
processor] having associated programming as set forth by FIGS. 7 and 8.” The examiner has not
made a prima facie showing that Wallis’ Figure 1 servo system has a digital signal processor,
programmed in the manner set forth in Figures 7 and 8 of the disclosure, to control “the position of
the head with respect to the disc.” Thus, in keeping with Donaldson, we will reverse the
anticipation rejection of claim 11 for lack of a showing that all of the structure and programming
imported into the limitations of claim 111 are indeed disclosed by Wallis.
DECISION
The decision of the examiner rejecting claims 11 and 12 under 35 U.S.C. § 102(b) is
affirmed as to claim 12 and is reversed as to claim 11. Accordingly, the decision of the examiner is
affirmed-in-part.
1 At oral hearing, appellant’s counsel suggested that maybe the specification should be
amended to fully delineate the exact structure and programming that is needed to perform the
function of broadly recited claim 11. From the standpoint of notice to the public as to what is
covered by such a broad claim, this panel certainly agrees with the appellant’s suggestion. We
note to the examiner that any amendment to identify the structure and programming
corresponding to the means-plus-function limitation would not constitute new matter.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007