Appeal No. 2006-0386
Application 09/460,222
that those claims were unpatentable over the prior art or whether they
were cancelled and the amended claims were submitted to cure the
"vague and indefinite" rejection.
(Footnotes omitted.) 367 F.2d at 846, 151 USPQ at 345-46.
Appellants’ Wesseler argument clearly has merit with respect to claim 1. The
stated basis for the § 112, ¶ 2 rejection of that claim, which recited, inter alia, “N
converging means whose aberrations have been respectively corrected for said N (N ≥
2) disc substrates having different thicknesses,” was that “it is not clearly recited
according to what structural element or means the aberrations had been corrected.”
August 17, 1992, Office action, at 2. This criticism was not additionally directed at any
of dependent claims 2 and 4-9, which described the converging means of the various
embodiments in greater detail. As a result, it is apparent that appellants could have
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”
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