Appeal No. 2006-1435 Page 4
Application No. 10/352,299
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how the invention of these
claims is deemed to be fully met by the disclosure of Philyaw
[answer, pages 4-5]. Since appellant has only made arguments
with respect to independent claims 1 and 21, we will consider
claims 1 and 21 as representative of all the claims subject to
this rejection. With respect to representative claim 1,
appellant argues that the examiner has failed to identify which
structure of Philyaw corresponds to the claimed carriage.
Appellant suggests that the examiner apparently considers the
reader 3700 of Philyaw to correspond to both the claimed carriage
and the claimed scanner apparatus which is asserted to be
improper [brief, pages 6-8]. The examiner responds that the
illumination source in Philyaw is positioned in the reader so
that it moves when the reader moves. The examiner asserts that
this means that the illumination device is positioned on a
structure or “carriage” that holds it in place inside the reader
[answer, page 10]. Appellant essentially repeats the arguments
noted above and responds that there does not appear to be any
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