Appeal No. 2001-2200
Application No. 09/286,328
the essential requirements of the invention are more specific than merely putting a
metal into an electrode structure.
We are thus unpersuaded that there is no basis for the section 112, first
paragraph rejection. Appellants group claims 8-13, 20-33, and 40 together, and submit
that the claims are "product claims" which "do not recite a copper layer." (See Brief at 4
and 6.) We sustain the rejection of claims 8, 10-13, 20, 23-33, and 40. However, we
cannot sustain the rejection of claims 9, 21, and 26. Each of claims 9 and 21 (with 26
depending from 21) further limits the claimed product by reciting process steps used in
forming the product. We interpret claims 9 and 21 as requiring the subject matter that
the disclosure teaches to be essential to practice of the invention.
Appellants also group claims 34-36 and 43-45 together, and argue that "these
claims positively recite a copper film in the process." (Brief at 8.) We consider each of
independent claims 34 and 43 (with claims 35 and 36 depending from 34) to set forth
subject matter, which includes the process steps requiring lamination of aluminum-
copper alloy film and copper film, consistent with essential practice of the invention.
We therefore do not sustain the rejection of claims 34-36 and 43. Contrary to
appellants' arguments, however, claims 44 and 45 do not set forth steps of laminating
an aluminum-copper alloy film and a copper film -- the claims recite "copper," rather
than "copper film." We sustain the rejection of claims 44 and 45.
Appellants group claims 37-39 together, and argue that the claims sufficiently
define the product with process limitations, including the limitation that the filter is
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