Ex Parte Sandhu et al - Page 7




                Appeal No. 2005-1031                                                                                                            
                Application No. 09/998,073                                                                                                      


                to converge the beam in Elliott is adjustable.  Nevertheless, Elliott does not disclose that the                                
                optical component is adjusted such that upon operation of the electromagnetic radiation source a                                
                beam produced thereby converges at a location in close proximity to, but not on, the workpiece                                  
                surface.  Therefore, Elliott does not describe the invention of claim 64, and the rejection of claim                            
                64 under 35 U.S.C. § 102(b) as being anticipated by Elliott is reversed.  See Verdegaal Bros.,                                  
                Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987) ("A claim is                                     
                anticipated only if each and every element as set forth in the claim is found, either expressly or                              
                inherently described, in a single prior art reference.").                                                                       
                         The patentability of claims 65-69 stands or falls with the patentability of claim 64.                                  
                Therefore, the rejection of claims 65-69 under 35 U.S.C. § 102(b) as being anticipated by Elliott                               
                is also reversed.                                                                                                               
                                                                 Conclusion                                                                     
                         The rejection of claims 46-58 and 60-63 under 35 U.S.C. § 102(b) as being anticipated by                               
                Elliott is affirmed.  The rejection of claims 64-69 under 35 U.S.C. § 102(b) as being anticipated                               
                by Elliott is reversed.                                                                                                         










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