render obvious Lee claim 5, all consistent with the moving party's duty of disclosure under 37
CFR § 1.56.
Moreover, van Engelen's argument that since the count is patentable over the prior art of
record, then Lee claim 5 is also patentable over the prior art of record, and should therefore be
undesignated as corresponding to the count is based on a flawed premise. It does not follow that
if the count is patentable over the prior art of record, then the claim van Engelen seeks to
undesigDate is separately patentable from the count. If that were the test, then no claim would
ever be designated as corresponding to a count. The analysis is made with the premise that the
claim being compared is prior art. That is the starting point. It is firom that point that the analysis
is made with respect to obviousness. That is, van Engelen should have demonstrated that given,
for example Lee claim 4, that Lee claim 5 would not have been obvious in view of Lee claim 4
and any known prior art.
That analysis would include a discussion of at least those references that would appear to
be relevant and that were disclosed in either of Lee's involved application or van Engelen's
involved patented file. Van Engelen's discussion centers around the fact that neither Lee claim 4
nor Lee claim 6 teach a mask holder and a substrate holder that are connected, in-part, to a
common machine frame and, in-part, to a common force frame as recited in Lee claim 5. Van
Engelen argues that claim 5 introduces the concept of a frame shared between the two moving
holders (motion at 12). However, at least Isohata2 made of record in the involved van Engelen
application shows a frame shared between two moving holders. Isohata shows in Fig. 1 a
substrate 6 and a mask 5 supported by common frame 7. We make no determination whether it
2 U.S. Patent 5,359,389, issued 25 October 1994, filed 13 October 1993.
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