Appeal No. 95-0638 Application 08/011,094 translates to 7.9 mils. Each of these values is outside the claimed range. Appellants argue that since none of the applied prior art teaches the thickness of the copper layers as recited in the claims, there is no prima facie showing of obviousness by the examiner. The examiner argues that the claims do not recite the usefulness of the thickness of the copper layers. It is not the function of the claims to describe the useful properties of the device. The specification in this application properly describes the advantages of using copper layers of the claimed thickness. It is enough that the claims on appeal clearly recite a structural limitation of the thickness of the copper layers. The examiner cannot ignore clear structural limitations in a claim, and it is improper to look to the claim for a recitation of the advantages of a structural limitation. The examiner also argues that the superior properties of the claimed invention which are argued by appellants are not properly incorporated into the claims. However, the superior properties result from the selection of specific values of thickness for the copper layers. These specific values of thickness are in the range of 0.5 to 7 mils and this range is 8Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007