Appeal No. 2001-2004 Page 9
Application No. 08/956,715
an energy of 20 to 30 dynes per centimeter. Claim 5 is inconsistent with the
instructions in the specification, for it states that the interface layer added to claim 1 by
subsequent claim 3 also has a surface energy level of 20 to 30 dynes per centimeter.
There is no support for such a limitation anywhere in the specification if this interface
layer is intended to be broad enough to include metal coating 2005 of Figure 20. It
would appear that the examiner is, in essence, relying upon claim 5 to overrule the
instructions given in the Bosley specification regarding the only applicable
embodiments, thus taking a single line of the reference out of context and combining it
with the hindsight afforded one who first viewed the appellants’ disclosure to render
claimed subject matter obvious. From our perspective, considering the reference in its
entirety leads one to conclude that the examiner’s reliance on claim 5 is not on firm
ground.
This conclusion is supported by considering the manner in which other claims set
forth the Bosley invention. Claim 15 recites an outer surface on the base material and
an interface layer which can include silver deposited on that outer surface. However,
while claim 15 recites that the member has an outer surface and an interface layer
deposited on the outer surface, it specifies that the outer surface of the member have
an energy level of 20 to 30 dynes per centimeter but is silent as to such a limitation
regarding the interface layer. Claim 16 recites that the outer surface of the member has
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