Ex parte THACKERAY - Page 3




          Appeal No. 1997-0106                                                        
          Application 07/792,482                                                      


               (2) Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70               
          are rejected under 35 U.S.C. § 112, first paragraph, based on               
          enablement.                                                                 
               (3) Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70               
          are rejected under 35 U.S.C. § 112, second paragraph.                       
               A.  Rejection under 35 U.S.C. § 112, second paragraph                  
               Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70 are               
          rejected under 35 U.S.C. § 112, second paragraph, for failing               
          to particularly point out and distinctly claim the subject                  
          matter which applicants regards as the invention.  According                
          to the examiner (Answer, p. 6):                                             
               Step (g) of claims 36, 56, and 66 recites "in the                      
               absence of a photoimaging step, removing the bared                     
               antihalation layer" however, Applicant previously                      
               recites photoimaging steps in the process, steps                       
               (d)-(f).  It is not clear how step (g) can be                          
               performed in the absence of a photoimaging step when                   
               the process contains photoimaging steps recited                        
               prior to the removal of the bared photoimaging                         
               layer.                                                                 
               Appellants argue (Brief, p. 12):                                       
               From the claim format and the language used, it                        
               would be abundantly clear to one skilled in the art                    
               that the step of removing the antihalation layer in                    
               step (g) in the absence of a photoimaging step meant                   
               that the antihalation layer is not imaged in step                      
               (g) to assist in its removal.                                          


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