Appeal No. 2005-2750
Application 09/460,221
responded to the § 112, ¶ 2 rejection insofar as it was directed to claim 1 by canceling it
in favor of dependent claims 2 and 4-9, rewritten in independent form. For this reason,
even though the “Remarks” portion of appellants’ amendment mentions the cancellation
of claim 1 only in the same sentence which mentions the art rejection (“Only claims 1
and 6 stand rejected on art; claims 1 and 6 are hereby canceled.”), the cancellation of
claim 1 in favor of the independent claims may have been motivated by a desire to
avoid the § 112, ¶ 2 rejection of claim 1.
The examiner’s contention that appellants’ “Remarks” argue that the limitations of
the dependent claims distinguish them from the prior art is not persuasive. Specifically,
the examiner contends that in the “Remarks”
applicant argued what appears to be the patentable subject matter that is
defined over the prior art in claim 4; stating “control means selects one of
the plurality of the light emitting means which are associated with the
converging optical systems. By selecting one of the light emitting means,
an aberration caused by the difference of the disk substrate thickness is
minimized.” Regarding claim[s] 6 and 7, applicant raise[d] the issue that
“control means is defined as generating a control signal which is provided
to the selecting means in accordance with the discrimination signal.”
Supplemental Answer at 6. We believe it is clearly evident from these “Remarks”about
claims 4, 6, and 7 (including their mention of claim 6, which was being canceled) that
are directed solely at the examiner’s 112, ¶ 2 criticisms of those claims, which were as
follows:
Claim 4 recites “control means for selecting the light emitting
means”. It is not clear whether the selection means selects one of the
objective lenses or one of the light beams?
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