Appeal No. 2003-0614
Application 09/520,591
examiner’s answer (Paper Nos. 4 and 11) for the respective
positions of the appellants and examiner regarding the merits of
these rejections.1
DISCUSSION
I. Petitionable matter
In the reply brief, the appellants contend that the examiner
improperly entered new grounds of rejection in the answer. As
this question is not directly connected with the merits of issues
involving the claim rejections, it is reviewable by petition to
the Director rather than by appeal to this Board (see In re
Hengehold, 440 F.2d 1395, 1403-04, 169 USPQ 473, 479 (CCPA
1971)), and hence will not be further addressed in this decision.
II. The 35 U.S.C. § 112, first paragraph, rejection of claims 1
through 26
According to the examiner, the appellants’ specification
fails to adequately teach how to make and/or use the claimed
invention, and thus is non-enabling, because
[c]laims 1 and 23 define a “means for determining
an incoming angle”. Claims 4 and 22 define a scanning
device adapted to determine angles of rotation. Claims
4, 16 and 22 define a rotating device that rotates the
wafer to an incoming angle of rotation. It is unclear
from the descriptive portion of the specification what
1 In the answer, the examiner neglected to restate the 35
U.S.C. § 103(a) rejection of claim 18. The record indicates that
this omission was inadvertent.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007