Appeal 2007-1809
Application 09/774,013
of surface defects and defect signature information) as corresponding to the
“distinctly different” limitations of (1) claims 5 and 8 (flag information), and
(2) claims 4 and 10 (evaluated result) (Br. 15; Reply Br. 8).
We will sustain the Examiner’s rejection. At the outset, we note that
Appellant has cited no authority to support the assertion that a reference
cannot be applied in the manner proposed by the Examiner. Nor has
Appellant disputed the specific teachings in Stavely relied upon by the
Examiner as corresponding to the respective limitations of (1) claims 5 and
8, and (2) claims 4 and 10. Appellant has simply not rebutted the
Examiner’s position in this regard – a position that we find reasonable.
To be sure, claim differentiation principles require us to presume that
each claim has a different meaning and scope. Otherwise, certain claims
would be superfluous. See Free Motion Fitness, Inc. v. Cybex Int’l, Inc.,
423 F.3d 1343, 1351 (Fed. Cir. 2005).
But even if the limitations between (1) claims 5 and 8 (flag
information), and (2) claims 4 and 10 (evaluated result) are “distinctly
different” as Appellant argues, we find no error in the Examiner’s reliance
upon a similar aspect from Stavely to meet these respective limitations.
Dependent claims incorporate by reference all the limitations of the
claim to which they refer. 35 U.S.C. § 112, ¶ 4. For example, dependent
claims 4 and 5 respectively incorporate the limitations of independent claim
1. Similarly, claims 8 and 10 each incorporate the limitations of
independent claim 7. While these claims share common independent claims,
they nevertheless have independent significance and must be separately
assessed for patentability.
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