Ex parte COMBE - Page 3




                 Appeal No. 1998-0820                                                                                                                   
                 Application No. 08/274,771                                                                                                             


                          Rather than reiterate all arguments of Appellant and                                                                          
                 Examiner, reference is made to the briefs and answer for the                                                                           
                 respective details thereof.2                                                                                                           


                                                                     OPINION                                                                            
                          We will not sustain the rejection of claim 2 under                                                                            
                 35 U.S.C.§ 112, second paragraph, nor of claims 1-4 and 7-8                                                                            
                 under 35 U.S.C.§ 112, first paragraph.                                                                                                 
                          Turning first to the rejection of claim 2 under 35 U.S.C.                                                                     
                 § 112, second paragraph, the Examiner asserts that use of the                                                                          
                 term "conductive material" is unclear because "all materials                                                                           
                 are 'conductive'" and "the specification sets no conductive                                                                            
                 requirement to the protective material."   Appellant responds           3                                                              
                 that not all materials are conductive and provides examples                                                                            
                 that fall within that category.                         4                                                                              
                          Analysis of 35 U.S.C. § 112, second paragraph, should                                                                         
                 begin with the determination of whether claims set out and                                                                             


                          2See the brief filed January 10, 1997 and the answer                                                                          
                 mailed May 22, 1997.                                                                                                                   
                          3See page 5 of the answer.                                                                                                    
                          4See page 8 of the brief.                                                                                                     
                                                                         -3-                                                                            




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