Appeal No. 2004-0288
Application No. 09/173,747
Additionally, the Examiner relies on a “formula” in Knight
for computing the beam size at the recording layer to be 26
microns and concludes that, when coupled with the 25-micron coil
opening of Lee, teaches the claimed relationship between the
center hole diameter and the diameter of the incident light and
the passing light (id.). However, a review of Knight reveals
that the portion of Knight identified by the Examiner (col. 35,
starting at line 50) merely lists the parameters of a typical
optical system without using them in any formula for calculating
the beam spot size. What a reference teaches is a question of
fact. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed.
Cir. 1994) (citing In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d
1040, 1041 (Fed. Cir. 1992)). Here the Examiner’s conclusion is
predicated on a line of reasoning that is not supported by any
factual evidence and is therefore, insufficient to prima facie
establish that the diameter of the incident light is greater than
the coil center hole diameter and the diameter of passing light
is equal to said center hole diameter, as recited in claim 37.
We note that claim 75 also include similar limitations
related to the relationship between the coil opening and the
incident light and the passing light which, as discussed above
with respect to claim 37, are absent in the prior art.
Accordingly, since the Examiner has failed to meet the burden of
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