Ex Parte Birk et al - Page 4

                  Appeal 2007-1710                                                                                           
                  Application 10/098,016                                                                                     
                  Appellants reason that the beams 2a, 2b-1 and 2b-2 are directed to only one                                
                  detector whereas in the claimed invention, the light in optical system travels                             
                  along a separate axis.  Brief pp. 3-4.  Appellants also argue that Nishio does                             
                  not teach a separate “mountable” device.  Appellants assert that the claims                                
                  recite two separate units whereas Nishio teaches one unit.  Further,                                       
                  Appellants argue that Nishio “fails to disclose that the detectors are                                     
                  mountable on the housing of the separate mountable device for adjusting”                                   
                  and that in Nishio the detectors are not mounted in the housing.  Brief p. 4.                              
                         In response, the Examiner states, on page 7 of the Answer, that Nishio                              
                  teaches a light beam, item 2, coupled-in (at item 11) to a device for adjusting                            
                  the beam and that the claims do not identify the coupled-in beam as spatially                              
                  separate.  Answer p. 7.  The Examiner also states that claim 1 does not recite                             
                  that the device is mountable.  Answer p. 7.  With regard to claim 8, the                                   
                  Examiner finds that the device of Nishio is capable of being mounted, and                                  
                  thus finds that Nishio teaches a mountable device for adjusting.  Answer p.                                
                  7.  Additionally, on page 8 of the Answer, the Examiner finds that claim 8                                 
                  does not recite a “separate” mounting device.  Finally, the Examiner finds:                                
                  “[t]he photo detectors (4-1 and 4-2) of Nishio et al. are inherently mounted                               
                  on a housing part of a device (30).  That is, the photo detectors do not float                             
                  in thin air, but must be mounted somehow (via a support, frame or interior)                                
                  to device 30.”                                                                                             
                         Thus, the contentions of Appellants and the Examiner present us with                                
                  two issues: first whether Nishio teaches a coupled-in beam as recited in the                               
                  claims and second whether the claim limitations directed to a mountable                                    
                  device define over Nishio.                                                                                 



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