Appeal No. 96-1515
Application 08/161/859
that he has successfully fulfilled his second responsibility
with respect to these claims.
With respect to independent claims 1 and 15, each of
these claims recites a densified region of the outermost
surface of a resin package being in contact with outside air.
The examiner points to resin 5 of Iga as meeting the resin 2
package and region 6 as meeting the densified region. A
cursory glance at Iga’s Figure 1 shows that densified region 6
is not in contact with outside air, but rather, is completely
enclosed by a resin outer layer 7 which is not a densified
layer. The examiner never addresses this clear difference
between the teachings of Iga and the recitations of claims 1
and 15. It appears that the examiner has ignored this
limitation of the claims because he had previously determined
that there was no support in the disclosure for this claim
limitation. It is improper to ignore limitations in a claim
for prior art purposes. Since the examiner has not addressed
the obviousness of the densified region being in contact with
2Our understanding of Iga is based on a translation
provided by the U. S. Patent and Trademark Office. A copy of
this translation is attached to this decision.
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