Ex Parte Shih et al - Page 3



                Appeal 2007-0465                                                                               
                Application 10/146,813                                                                         
                      The Examiner finds that Williams produces a microscopic image                            
                product, not merely an interference pattern.  The Examiner refers to                           
                pattern 142 in Figure 1 and the statements that the system "images                             
                interferometric lines" (col. 7, ll. 10-11) and that "[a]ccording to the present                
                system, the classical optical beam is replaced by a quantum stream of n                        
                entangled protons" (col. 6, ll. 51-53).  (Answer 5-6.)  The Examiner finds                     
                that although Williams does not mention "microscopic image," a photon is                       
                of microscopic scale, and any image created by a particle of microscopic                       
                size is a microscopic image product (id. at 6).                                                
                      Appellants argue that the interference pattern 142 cannot be                             
                considered an image product (Reply Br. 5).  It is argued that the statement at                 
                column 7 that interferometric lines are images does not disclose a                             
                microscopic image product (id.).  It is argued that it is well known that an                   
                interferometer produces only straight lines or circles and Williams cannot                     
                produce complex image patterns (id.).  It is argued that the Examiner admits                   
                that Williams does not explicitly mention a "microscopic image" and "it is                     
                clear that there is no explicit disclosure of an image product as only                         
                interference patterns are disclosed" (Reply Br. 6).                                            

                      Claim interpretation                                                                     
                      Proper claim interpretation necessarily precedes a determination of                      
                patentability.  See Gechter v. Davidson, 116 F.3d 1454, 1457,                                  
                43 USPQ2d 1030, 1032 (Fed. Cir. 1997) ("Implicit in our review of the                          
                Board's anticipation analysis is that the claim must first have been correctly                 
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