Ex parte BAX et al. - Page 6




          Appeal No. 1997-3520                                                        
          Application No. 08/357,487                                                  


          Answer).  However, we fully concur with appellants that when                
          the criticized claim language is read in light of the present               
          specification, as it must be, one of ordinary skill in the art              
          would readily understand that "one adhesive layer is disposed               
          between, and adheres, the barrier core layer to an outermost                
          layer, and the other adhesive layer is disposed between, and                
          adheres, the barrier core layer to another outermost layer"                 
          (page 11 of Brief).  Likewise, the examiner has not set forth               
          any compelling line of reasoning which establishes that one of              
          ordinary skill in the art would not understand the claim                    
          language "both directions" to refer to the longitudinal and                 
          transverse directions of the film.                                          
               We now turn to the examiner's rejection under 35 U.S.C.                
          § 103.  The examiner acknowledges that the applied references,              
          particularly the primary references of Newsome, are silent                  
          regarding the maximum shrink force of the disclosed heat-                   
          shrinkable film.  Notwithstanding this silence, the examiner                
          concludes that "the film of Newsome would inherently meet the               
          criterion of 0.5 N/cm since depending upon test sample                      
          dimensions or thickness of the Newsome film it would meet the               
          limitation as now claimed" (page 5 of Answer).  However, the                
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