Ex parte CRONIN et al. - Page 3




          Appeal No. 95-2718                                                          
          Application 07/914,852                                                      


               Appealed claims 1-31 stand rejected under 35 U.S.C.                    
           112, second paragraph.  Claims 1-4, 6-11, 13-18, 21, 23-27,               
          29 and 30 stand rejected under 35 U.S.C.  103 as being                     
          unpatentable over Moser.                                                    
               We consider first the rejection of the appealed claims                 
          under 35 U.S.C.  112, second paragraph.  It is the examiner’s              
          position that the claim 1 language “suitable carrier solvent”               
          and “a desired thickness” are indefinite.  However, we fully                
          concur with appellants that when the claim language is read in              
          light of the relevant portions of the present specification,                
          as it must be, one of ordinary skill in the art would readily               
          understand which solvents are suitable and what is a desired                
          thickness.  We note that the Examiner’s Answer offers no                    
          response to appellants’ argument that one of ordinary skill in              
          the art would understand the meaning of the claim language                  
          when such is read in light of the present specification.                    
          Likewise, the examiner has not established a prima facie case               
          of indefiniteness of the claim language “metallic oxide                     
          precursor” or the claim 26 language “solid-state precursor.”                
          Accordingly, we will not sustain the examiner’s rejection of                
          the appealed claims under 35 U.S.C.  112, second paragraph.                


                                         -3-                                          




Page:  Previous  1  2  3  4  5  6  7  Next 

Last modified: November 3, 2007