Appeal No. 2005-0180 5
Application No. 09/928,070
remains substantially unchanged.” Like appellant, it is our view that the breakneck
groove (24) in the pin (14) of Kendall would have been recognized by one of ordinary
skill in the art as providing a noticeable reduction in the diameter of the pin and a
change in the shape of the pin (14), without necessarily providing “a changed structure
of a stem material,” as required in claim 8 on appeal.
As is made clear in appellant’s specification, the heating of a selected
circumferential portion of the stylus stem, e.g., by a laser beam, to form a weakened
break-off region (6), results in that region having a changed structure of the stem
material, i.e., a change in the crystallographic structure of the stem material. No such
“changed structure of a stem material” is taught, disclosed or otherwise suggested in
Kendall. Moreover, appellant’s specification makes clear that the heating step
mentioned above takes place with “no removal of material or a minimal removal of
material” so that the diameter of the stem does not change or would change only
insignificantly (specification, page 10). Thus, the language of claim 8 that the diameter
of the stem in the break-off region “remains substantially unchanged” must be
understood in the context of appellant’s disclosure as requiring no change or only
insignificant change in the diameter. Contrary to the examiner’s view, the groove (24) of
Kendall defining the breakneck region of pin (14) clearly represents a significant and
noticeable change in the pin diameter.
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