Appeal No. 1998-0296
Application 08/431,312
presented any motive or incentive for modifying the teachings
of Kitamura to include this limitation.
In the answer , the Examiner admits "Kitamura fail to7
explicitly show the thickness being twice a maximum expected
deformation of the package during the molding step".
The Examiner contends however that Kitamura discloses this
difference "as much as Applicant does" and that one skilled in
the art would recognize that the molding process may be formed
to provide the claimed difference in thicknesses. Finally,
the Examiner asserts that this claim language is product-by-
process language and therefore is given little weight.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998).
Turning first to Appellants' claim 21, we note that the
claim recites in the final subparagraph, "wherein said plastic
body . . . has a maximum thickness near the edges and has a
minimum thickness in the central portion, wherein the
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