Appeal No. 2001-2004 Page 8
Application No. 08/956,715
show the other embodiment where silver is used as a coating for the surface of the
base materials, there also is no teaching of treating the silver coating to achieve a
surface energy of 20 to 30 dynes per centimeter (see column 13, line 41 et seq.).
As for claim 5, upon which the examiner also relied, we agree with the
appellants, essentially for the reasons set out on pages 6-8 of their Brief, that claim 5 of
Bosley is not consistent with the specification and cannot be relied upon as the basis
for concluding that one of ordinary skill in the art would have been taught by the
reference that a layer of elemental silver applied to the base material should have a
specific surface energy density of about 20 to 30 dynes per centimeter. Claim 5 states
that the interface layer provided in preceding claim 3 has a surface energy in the range
of 20 to 30 dynes per centimeter. Claim 5 does not, however, state that the interface
layer is of silver, and thus in and of itself does not establish silver as being one of the
materials to which the 20 to 30 dynes limitation is to apply. Moreover, it is quite clear
from the portions of the Bosley specification referenced above that, in the course of
achieving the objective of enhanced acoustic characteristics, Bosley instructs the
artisan to provide the surface of the base member, but not the silver layer that coats the
base layer in some of the embodiments of the invention, with a surface energy of 20 to
30 dynes per centimeter.
Claim 1, from which claim 5 depends, is consistent with these instructions, for it
recites that there is an elongated member and that an outer surface of the member has
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007