Ex parte HWANG et al. - Page 9




          Appeal No. 1998-1096                                                        
          Application No. 08/415,399                                                  


               Turning to a consideration of the 35 U.S.C.  102(b)                   
          rejection of claims 8-10 as being anticipated by Sugawara, we               
          reverse this rejection as well for the same reasons discussed               
          supra.  In addressing independent claim 8, the Examiner again               
          has improperly dismissed the absorption reduction factor claim              
          language which is identical to that in claim 1.  As with the                
          Cannella reference discussed supra, the Examiner has provided               
          no indication as to how Sugawara’s conductive film layer would              
          meet the requirements of claim 8.                                           
               As a final consideration, we turn to the Examiner’s                    
          35 U.S.C.  103 rejection of dependent claim 7 as being                     
          unpatentable over Cannella in view of Sugawara.  The Examiner,              
          as the basis for the obviousness rejection, proposes a                      
          combination of Sugawara with Cannella to address the                        
          “packaging material” limitation of claim 7.  Claim 7, by                    
          virtue of its ultimate dependence on independent claim 5,                   
          contains all of the limitations of claim 5. From our earlier                
          discussion, however, it is apparent that the Examiner has not               
          established a prima facie case of obviousness with respect to               
          claim 7 since neither Cannella nor Sugawara teaches or                      
          suggests the claimed absorption reduction factor.  Therefore,               
                                          9                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007