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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