Appeal No. 96-0462
Application 08/165,513
to those of ordinary skill in the art. Claim 5 is not limited
to any particular thin film electrode material and the
Examiner has failed to even try to show that there is no
material which could provide a thin film electrode with high
surface resistivity of about 1 MS/G. The Examiner has failed
to establish a prima facie case of nonenablement that would
shift the burden of rebuttal to Appellants. The rejection of
claims 3 and 5 under § 112, first paragraph, is reversed.
The Examiner states that Appellants argue that the film
can be made by forming a film of incomplete coverage, but that
"[i]ncomplete coverage is not disclosed by the originally
filed application nor [is it] conventional within the liquid
crystal art" (EA4). Since the Examiner has not established a
prima facie case that one of ordinary skill in the art would
not have known how to make an ITO (or other material) thin
film with high resistivity, the fact that the specification
does not disclose the process of making is not important. A
patent need not teach, and preferably omits, what is well
known in the art. Paperless Accounting, Inc. v. Bay Area
Rapid Transit System, 804 F.2d 659, 664, 231 USPQ 649, 652
(Fed. Cir. 1986).
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