Ex Parte USHIWATA et al - Page 11



          Appeal No. 2006-2116                                                        
          Application No. 08/879,517                                                  

          (Fed. Cir. 1992); In re Deminski, 796 F.2d 436, 442, 230 USPQ 313,          
          315 (Fed. Cir. 1986).                                                       
               Appellant would have us limit the field of endeavor to                 
          smaller “desk-top” cutting machines and limit the problem with              
          which the applicants are concerned to difficulties encountered              
          making compound angular cuts using smaller “desk-top” cutting               
          machines.  We find appellant’s view of the full scope of prior art          
          analogous to the claimed invention unreasonably restricted with             
          regard to the sizes and shapes of composites comprising a saw, a            
    10    saw motor, a transition means, a base for the workpiece, the situs          
          of the workpiece, the workpiece itself, and problems related to             
          their utility for compound angular cutting of a workpiece.  In our          
          view, persons skilled in the art would have considered the problem          
          to which the claimed invention is directed with less regard for             
          the sizes and shapes of the particular saw, saw motor, transition           
          means, base for the workpiece, the location of the workpiece and            
          the workpiece itself.  Rather, we find prior art to be analogous            
          to the full scope of the invention claimed when it reasonably               
          pertains to the problem more broadly defined by appellant’s own             
    20    specification, i.e., how to make compound angular cuts, including           
          left and right 45 degree angular cuts, on a workpiece without               
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