Ex parte SUMMERFELT et al. - Page 7




          Appeal No. 1998-1077                                       Page 7           
          Application No. 08/458,999                                                  


          thin film of barium and/or strontium lead titanate with a                   
          grain size of 0.02 to 0.2 micrometers in a method as herein                 
          claimed.       The examiner (answer, page 4) focuses on an                  
          average grain size for a bulk ceramic as measured by a line                 
          intercept method that is reported in a disclosed preferred                  
          embodiment of appellants’ specification (page 7) and seemingly              
          concludes therefrom that one of ordinary skill in the art                   
          would have understood that appellants’ original disclosure                  
          only specifies such a larger grain size for a thin film formed              
          from a lead enhanced perovskite material.                                   
               We do not agree since the examiner has not convincingly                
          explained why the application taken as a whole, as filed, does              
          not reasonably establish possession of the claimed invention                
          by appellants.  Concerning this matter, we note the                         
          description of thin film capacitors having thin film grain                  
          sizes similar to film thickness and generally 0.02 to 0.20                  
          microns in size at page 3 of the specification coupled with                 
          the disclosure of employing a perovskite material (barium                   
          titanate or barium strontium titanate) with lead added thereto              
          (specification, page 3, line 29 through page 4, line 22) so as              
          to ultimately obtain a thin film form material with “grain                  







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