Ex Parte Kahlisch et al - Page 5



          Appeal No. 2005-0234                                                        
          Application No. 09/901,550                                                  

          with no indication as to which parts.  Thus, Wiech fails to                 
          disclose the recited preventing a flowable material from flowing            
          from a bonding channel onto the frame and conductor tracks.                 
               Second, appellants contend (Brief, page 8) that with regard            
          to the claimed parting agent, "Wiech, Jr., explicitly teach[es]             
          that reference sign 24 denotes a conductive material, namely a              
          metal line formed in the groove. . . . [T]he conductive material            
          24 forms conductors rather than a parting agent."  Appellants               
          continue (Brief, page 8) that "Wiech, Jr. also does not suggest             
          or provide any hint to use a groove filled with a parting agent             
          for repelling a flowable material."  We agree.                              
               As stated by appellants, element 24 in Wiech is a conductor,           
          with no teaching or suggestion that it repels a flowable                    
          material.  Although the examiner states that element 24 "is                 
          capable of performing the intended use," the examiner supplies no           
          evidence of such.  In fact, the examiner states that any material           
          would satisfy the limitation because appellants did not list                
          particular materials in the specification.  However, appellants             
          have defined "parting agent" (specification, page 7) as a                   
          material which repels a flowable material, and appellants have              
          recited in the claims that the parting agent must repel the                 
          flowable material.  Therefore, for a material to satisfy the                
                                          5                                           




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