Appeal No. 96-1619
Application 08/263,015
Appellant also argues that the claimed range of
substrate thicknesses represents a narrow range in which the
invention unexpectedly works. According to appellant, the
Kuhlman substrate does not have the property that “when bent
to conform to said curved faceplate [it] will bend without
fracturing and also when bent remains wrinkle free to preserve
its optical properties” as recited in claim 22. There is
evidence on this record that the thermoformed shield of
Kuhlman will crack when bent. Based upon the examiner’s
rejection of the claim under the second paragraph of 35 U.S.C.
§ 112, the examiner noted that “no patentable weight” had been
afforded this recitation in the claim [answer, page 3].
It was error for the examiner to ignore this
limitation of claim 22. As we noted above in the discussion
of the rejection under Section 112, the properties of the
material recited in claim 22 are clear and such properties
cannot be ignored by the examiner. The examiner has failed to
convince us that the preformed shield in Kuhlman is
“inherently flexible” when attached to a faceplate and would
have the claimed non-fracture and wrinkle free properties at
this time. Thus, the examiner has failed to establish a prima
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