Ex parte OHMI et al. - Page 4




          Appeal No. 1998-1571                                                        
          Application No. 08/022,199                                                  

                    It is the Examiner position that the formation                    
               of grooves in the substrate are not necessary for                      
               the invention to produce the desired results.  In                      
               support of the Examiner position, the specification                    
               (pg. 16, lines 26-29), discloses that groove                           
               formation by the laser is not necessary for the                        
               invention to work, but merely to have the catalyst                     
               deactivated.                                                           
               It is not immediately apparent to us what point the                    
          examiner is attempting to make with these comments.                         
          Regardless, we consider it appropriate to respond to these                  
          comments by clarifying that the appealed claims expressly                   
          require the formation of groove portions and that these groove              
          portions are disclosed in the appellants’ specification as                  
          serving a desirable purpose (e.g., see the last full paragraph              
          on specification page 7).                                                   
               The decision of the examiner is reversed.                              
                                      REVERSED                                        



          Bradley R. Garris               )                                           
               Administrative Patent Judge     )                                      
                    )                                                                 
                                                  )                                   
                                                  )                                   
                         Paul Lieberman                  ) BOARD OF                   
          PATENT                                                                      
                         Administrative Patent Judge     )   APPEALS AND              
                                                  )  INTERFERENCES                    

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