Ex Parte Asao et al - Page 5



         Appeal No. 2006-2220                                                       
         Application No. 09/813,348                                                 
         Appellants (brief, page 8) that the absence of the specific parts          
         of the claimed process steps in the reference indicates that the           
         combination of Kaneyuki and Glennon cannot support a prima facie           
         case of obviousness.  Accordingly, we do not sustain the 35 U.S.C.         
         § 103 rejection of claims 1, 3, 7, 8 and 9 over Kaneyuki and               
         Glennon.                                                                   
              With respect to the rejection of the remaining claims, we             
         note that the Examiner relies on Taniguchi ‘484 and Taniguchi ‘559         
         for additional features claimed in the other dependent claims.             
         However, the Examiner has not pointed to any convincing rationale          
         in modifying Kaneyuki and Glennon with the teachings of Taniguchi          
         references that would have overcome the deficiencies of the applied        
         prior art as discussed above with respect to claims 1, 3 and 7-9.          
         Accordingly, the 35 U.S.C. § 103 rejection of claims 2, 4-6 and 10         
         over Kaneyuki and Glennon in combination with Taniguchi ‘484 or            
         ‘559 cannot be sustained.                                                  








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