Ex parte HALUSKA - Page 13




          Appeal No. 1996-3816                                      Page 13           
          Application No. 08/293,331                                                  

          PAK, Administrative Patent Judge, Dissenting                                
               I respectfully dissent from the majority’s opinion.  The               
          present application, which includes the appealed product-by-                
          process claims, is a division of an application containing                  
          process claims, which matured into U.S. Patent 5,380,567.                   
          Claim 1 of U.S. Patent 5,380,567, which was the subject of the              
          restriction requirement by the same examiner in the present                 
          application, is reproduced below.                                           
               1. A method of forming a coating on an electronic device               
          consisting essentially of:                                                  
                    (A) coating the electronic device with a solution                 
               consisting essentially of a solvent and hydrogen                       
                    silsesquioxane resin;                                             
                    (B) evaporating the solvent to deposit a preceramic               
               coating on the electronic device; and                                  
                    (C) heating the preceramic coating to a temperature               
          of between about 500E up to about 800EC. under an inert gas                 
               atmosphere.                                                            
          This claim recites process limitations which are closer to the              
          process limitations of the product-by-process claims in                     
          question than the claims of U.S. Patent 5,370,904 issued to                 
          Mine et al.  For convenience, claim 1 of U.S. Patent 5,370,904              
          (Mine et al.) is reproduced below.                                          
               1. A method for the formation of a silicon oxide film                  
          comprising:                                                                 







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