Ex parte TANAKA et al. - Page 6




          Appeal No. 96-0462                                                           
          Application 08/165,513                                                       

          normal resistance per square of ITO is around 50 S/square"                   
          (FR3).  Kamijo discloses a resistivity of 50 S/G (Table 1,                   
          col. 3).  However, since Kamijo is making transparent                        
          electrodes it is expected that the resistivity would be low;                 
          this does not prove that an ITO film with high resistivity was               
          unknown to those of ordinary skill in the art.  The Examiner                 
          states that "[Matsumoto] demonstrates the normal resistivity                 
          per square" (FR4).  Matsumoto discloses a transparent                        
          electrode of metal oxide such as ITO which "has a surface                    
          resistivity of not greater than 100 ohm/G, preferably, from 10               
          to 80 ohm/G" (col. 2, lines 59-60).  It is also disclosed that               
          there are known ITO films with "a resistivity of from 200 to                 
          300 ohm/G" (col. 3, lines 15-16).  Again, since Matsumoto is                 
          making transparent electrodes it is expected that the                        
          resistivity would be low; this does not prove that an ITO film               
          with high resistivity was unknown to those of ordinary skill                 
          in the art.  The Examiner has failed to demonstrate that one                 
          of ordinary skill in the art would not have known how to make                
          ITO thin films with high resistivity.  The fact that the                     
          Examiner is personally not aware of ITO films with high                      
          resistivity is not persuasive as to what would have been known               

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