Ex parte VAN ENGELSHOVEN et al. - Page 11




          Appeal No. 1998-0335                                                        
          Application 08/518,061                                                      


          relationship would be determined by routine experimentation,                
          and there is no evidence of new and unexpected results on the               
          record [answer, pages 4-5].  Appellants argue that neither                  
          Shimoma nor Matsuda teaches that there is an optimum                        
          relationship between aperture diameter and electrode thickness              
          [brief, page 6].                                                            
          We agree with appellants that the invention of claims                       
          9-11 is not obvious within the meaning of 35 U.S.C.  103 on                
          this record.  If the record reflected that the prior art was                
          aware of some relationship between electrode thickness and                  
          aperture diameter, then the examiner might be correct that                  
          optimizing this relationship would require only routine skill.              
          There is no evidence on this record, however, that the prior                
          art recognized the claimed relationship at all.  Absent some                
          evidence to suggest that there should be some relationship                  
          between aperture diameter and electrode thickness, there is no              
          support for the examiner’s conclusion that the invention of                 
          claims 9-11 results from routine experimentation.  Therefore,               
          we do not sustain the rejection of claims 9-11.                             
          In summary, we have sustained the examiner’s rejection                      
          of claims 7 and 8 under 35 U.S.C.  103, but we have not                    
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