Appeal No. 2005-2234
Application No. 10/135,005
F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus,
the burden is on the examiner to identify concrete evidence in
the record to support his conclusion that it would have been
obvious to modify the teachings of the cited references to
achieve the claimed invention. See id.; In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). In the
present case, the examiner has simply failed to meet this
burden.
In making the above determination, however, we refer to the
Advisory Action discussed by appellants on page 5 of their
Brief. In this Advisory Action, it appears to us that the
examiner bases his conclusion of obviousness on incorrect claim
interpretation. That is, the examiner states “[f]urther, it has
been held that claim language that simply specifies an intended
use or field of use for the invention generally will not limit
the scope of a claim.” We believe this may be in reference to
the language reproduced below, in bold (claim 21 is reproduced
below, with text in bold for emphasis):
21. A charged particle beam system for milling and imaging
a work piece, the system comprising:
a housing for housing the workpiece;
a work stage assembly adapted a) for supporting the
workpiece, b) for translating the workpiece along a first axis,
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007