Ex parte CRONIN et al. - Page 6




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


          or suggestion in Moser that the metallic oxide precursor is a               
          metal-peroxy acid ester, as claimed.  Since, as pointed out by              
          appellants, claims 6-10 are all ultimately dependent upon                   
          claim 5, the  103 rejection of claims 6-10 cannot be                       
          sustained.  Likewise, claims 12, 19 and 20, which also define               
          the metallic oxide precursor as a metal-peroxy acid ester, are              
          indicated as free of the prior art.  In addition, the examiner              
          has indicated in the Supplemental Answer that claims 28 and 31              
          are free of the art.  Since claims 29 and 30 ultimately depend              
          on claim 28, they, likewise, are free of the art.                           
               We note that there is a discrepancy in the examiner’s                  
          treatment of appealed claim 21.  Page 3 of the Answer states                
          that claim 21 would be allowable if rewritten to overcome the               
           112 rejection, whereas page 4 of the Answer states that                   
          appealed claim 21 stands rejected under  103.  Since we find               
          that Moser discloses a metallic oxide precursor that yields an              
          electrically conductive metal oxide, we will sustain the  103              
          rejection of claim 21 and claims 23-25 dependent thereon, as                
          well as claims 26 and 27.                                                   
               In conclusion, based on the foregoing, the examiner’s                  
          rejection of claims 1-31 under 35 U.S.C.  112, second                      


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