Ex parte MATSUURA et al. - Page 5




          Appeal No. 1999-0139                                                       
          Application No. 08/542,576                                                 


          and additives such as a coupling agent (brief, page 6).  The               
          appellants argue that their comparative examples   3 and 4                 
          (specification, page 43, line 19 - page 44, line 15) provide               
          evidence that an adhesive made from a polyimide resin does not             
          necessarily have the coming-out length required by their                   
          claims (brief, page 5).  The coming-out lengths in comparative             
          examples 3 and 4 are, respectively, 3.4 mm and 2.2 mm.                     
               The examiner does not address the disclosure in the                   
          appellants’ specification regarding the factors which                      
          influence the coming-out length and the water absorption rate.             
          Nor does                                                                   
          the examiner discuss the evidence in the specification.                    
          Instead,                                                                   


          the examiner erroneously argues that there is apparently                   
          nothing of record which indicates that all of Pashby’s                     
          adhesives do not have a coming-out length within the range                 
          required by the appellants’ claims (answer, page 9).                       
               The appellants have, as discussed above, provided                     
          evidence that polyimide adhesives do not necessarily have a                
          coming-out length within the range required by their claims,               
                                         5                                           





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