Appeal No. 96-2821
Application 08/015,007
As described above, it is necessary to use the Cu/Mo/Cu
clad material of the thickness ratio from 1:3:1 to
1:5:1 so as to prevent the inadequate leak of the
glass 13, and therefore the thermal expansion
coefficient should be in the range of 6.0-
6.8(× 10 / C).-6 N
(Paper 1 at 9, emphasis added.)
6. Applicants have an obligation to claim their invention
precisely. Morris, 43 USPQ2d at 1759. If the Cu/Mo/Cu thickness
ratio is necessary, as the disclosure states with support from
Figure 8, then it is also a necessary limitation in the claim;
otherwise, the claim would encompass packages (e.g., with a
Cu/Mo/Cu thickness ration of 1:1:1) that Applicants have
identified as inadequate. We cannot cure this defect by reading
the claim as limited to the disclosed subject matter. Therefore,
we must reject claim 5 under section 112 for failing to claim the
invention precisely.
DECISION
We reverse the rejection of claim 5 under section 103
because record lacks a preponderance of evidence to support a
conclusion that the adhesive thickness limitation would have been
obvious to a person having ordinary skill in the art.
We enter a new ground of rejection under section 112 because
the claim fails to recite a limitation that Applicants have
identified as a necessary part of the invention.
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