Ex parte TANAKA et al. - Page 8




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


          35 U.S.C. § 103                                                              
               The Examiner relies on Kamijo only for its disclosure of                
          ITO electrodes having a surface resistivity of about 50 S/G.                 
          Hanyu describes ITO electrodes coated with "short circuit-                   
          preventing layers" of SnO  or Sn-Ti oxide (Table 1,                          
                                   2                                                   
          cols. 5-6), each of which has a resistance of from 1 S/cm  to2                  
            5    2                                                                     
          10  S/cm  "in the direction of the layer thickness" (col. 3,                 
          line 7).  The Examiner states (FR4):  "The 1 MS/square point                 
          is overlapped by the range of the resistance being 1 to                      
            5    2                                                                     
          10  S/cm  for a thickness of 10-300 nm."  We see that the                    
          thicknesses are taken from claim 3.                                          
               Appellants argue that the Examiner's argument makes no                  
          sense because "resistivity and resistance do not correspond to               
          surface resistivity and are expressed in entirely different                  
          units, and values given for those properties cannot be related               
          in any way to surface resistivity values" (Br14).  The                       
          Examiner asserts that "[t]he surface resistivity and the                     
          resistivity are proportional even if the measurements are of                 
          different characteristics" (FR5).  Appellants respond (Br14):                
          "The Examiner has cited no authority for that speculative                    
          assertion and, indeed, cannot do so.  As noted above, there is               
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