Appeal No. 96-0462
Application 08/165,513
OPINION
Grouping of claims
Appellants argue (RBr) that the Examiner erred in stating
that "claims 1, 2, 4 and 5 stand or fall together" (EA2). We
agree. Appellants stated in the Grouping of Claims section
that claims 2, 4, and 5 fall separately (Br5) and gave reasons
in the Argument section (Br15). However, since we reverse the
rejections, the error does not affect our decision.
35 U.S.C. § 112, first paragraph, enablement
The issue is enablement of a thin film layer of ITO
having a high surface resistivity, as recited in claim 3, or a
thin film layer of electrode material with a surface
resistivity of about 1 MS/G, as recited in dependent claim 5.
The Examiner limits the issue to ITO (EA2); however, neither
claim 5 nor independent claim 1 recites ITO or any particular
electrode material.
"The test of enablement is whether one reasonably skilled
in the art could make or use the invention from the
disclosures in the patent coupled with information known in
the art without undue experimentation." United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
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