Ex parte HIRATA et al. - Page 4




          Appeal No. 1998-1470                                                        
          Application 08/533,740                                                      

               Appellants argue that the essential difference between                 
          Hoogeveen and the subject matter of claims 1 and 7 is the                   
          claimed recitation of "an adhesive layer integrally joining                 
          said substrate and said protective member."  Appellants argue               
          that Hoogeveen discloses that brim 44 is secured to                         
          substrate 41 "by means of an adhesive" (col. 4, line 25), but               
          does not define any purpose of the adhesive and thus fails to               
          teach the advantages of an adhesive layer which not only                    
          adheres the protective rim to the substrate, but also provides              
          the structure and function of damping the shocks conducted to               
          the glass substrate (Br5-6).                                                
               The Examiner responds that the claims do not define any                
          additional purpose for the adhesive, so Appellants' argument                
          is not commensurate in scope with the claims (EA8).  The                    
          Examiner further opines that even if the alternate purpose of               
          providing damping was claimed, the adhesive in Hoogeveen would              
          fulfill the same role (EA8).                                                
               We agree with the Examiner that the claims do not recite               
          any purpose for the adhesive other than "integrally joining                 
          said substrate and said protective member," which is                        
          accomplished by Hoogeveen.  Although most adhesives are not                 

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