Ex Parte Spruit et al - Page 10



          Appeal No. 2004-0779                                                        
          Application No. 09/790,185                                Page 10           

          marks.  Preventing destruction of the Marks is not a teaching of            
          destroying the marks.  In addition, even if Oshima discloses                
          destroying the stripes/marks, we find no disclosure of erasure of           
          the marks as a means of destroying them.                                    
               From all of the above, we find that the examiner has failed            
          to establish a prima facie case of anticipation of claim 1.                 
          Accordingly, the rejection of claim 1 under 35 U.S.C. § 102(b) is           
          reversed.  As claim 7 also recites that the identification mark             
          is erasable, the rejection of claim 7 under 35 U.S.C. § 102(b) is           
          reversed.                                                                   
               We turn next to the rejection of claims 2-4 under 35 U.S.C.            
          § 102(b) as being anticipated by Oshima, or in the alternative,             
          under 35 U.S.C. § 103(a) as being unpatentable over Oshima ('299)           
          in view of Satoh and Aoki.  At the outset, we reverse the                   
          rejection of claims 2-4 under 35 U.S.C. § 102(b) as being                   
          anticipated based upon our findings, supra, with respect to claim           
          1, from which claims 2-4 depend.  Turning to the 35 U.S.C.                  
          § 103(a) rejection, the examiner relies upon Satoh (claims 2 and            
          4) to support the examiner's taking of Official Notice that the             
          use of spiral and concentric tracks are old and well known.  The            
          examiner additionally relies upon Aoki (claim 4) to support the             
          examiner's assertion (answer, page 4) that:                                 





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