Appeal No. 2005-0891 Page 9
Application No. 09/916,566
Jeantette each of the method steps is disclosed (see brief, page 4). The examiner’s
only response to this argument is to contend that, “despite minor wording differences,”
claims 1, 3 and 4 have identical requirements to claims 5 and 6 combined, 7 and 8,
respectively, and that “[i]t would be impossible to practice the use of the system without
the method [sic] subsequently claimed method” (answer, page 8). We note that the
limitations of claim 5 are not identical to those of claim 1. For example, while claim 1
refers to a deposit having a “physical attribute,” claim 5 refers to a deposit having a
“physical dimension.” Further, claim 5 recites a step of monitoring the laser interaction
zone to generate an optical signal indicative of the physical dimension, while claim 1
recites an optoelectric sensor to output an electrical signal as a function of the physical
attribute. An optical signal is certainly not identical to an electrical signal and a physical
dimension is narrower than a physical attribute and the examiner’s rejection of claims 5-
8 and response to arguments with respect to these claims do not seem to come to grips
with these differences or point out where these specific steps are disclosed in Jeantette.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 3-8 under 35
U.S.C. § 103 is affirmed as to claims 1, 3 and 4 and reversed as to claims 5-8.
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