Ex parte DOWNS - Page 8

                Appeal No. 95-3273                                                                                                            
                Application 08/136,856                                                                                                        

                                 plastic which can be cut with a pair of scissors.  A                                                         
                                 ceramic piezoelectric element is, except for its                                                             
                                 electrical characteristics, about like a piece of                                                            
                                 stone, and it can be cut with a diamond saw.  [Reply                                                         
                                 Brief at 3.]                                                                                                 
                We do not agree that the term "thin film" as used in claim 1                                                                  
                would have been understood by the artisan to necessarily mean a                                                               
                sheet of plastic-like material that is capable of being cut with                                                              
                scissors.   While this is an accurate description of a PVDF film,5                                                                                                              
                which is appellant's only disclosed example of a suitable                                                                     
                piezoelectric film material, it is improper to read limitations                                                               
                from examples given in the specification into the claims.                                                                     
                Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571,                                                                
                7 USPQ2d 1057, 1064 (Fed. Cir. 1988).  On the record before us,                                                               
                we believe the artisan would have construed the term "thin film"                                                              
                in claim 1 broadly to mean "[a] thin sheet or coating of                                                                      
                material," which is the broader of the two definitions given for                                                              
                "film" in McGraw-Hill Electronics Dictionary 208 (1994 ed.).  As                                                              
                a result, the phrase "thin film of piezoelectric material" is                                                                 
                broad enough to read on Rokurota's piezoelectric element 38,                                                                  
                which may have a thickness of, for example, 0.3 millimeters                                                                   
                (col. 4, lines 54-55).  We note that since 0.3 millimeters is the                                                             

                5As appellant correctly notes in the reply thereto, the                                                                       
                Supplemental Examiner's Answer mischaracterized their position to                                                             
                be that the term "thin film of piezoelectric material" must be                                                                
                construed to mean a PVDF film.                                                                                                


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