Appeal No. 2002-0510 Page 10
Application No. 09/139,309
such that the outer layers contain lower particle loadings than the inner layer, in order to
achieve a wide range of clamping voltages and other desired properties." (Spec. at 5.)
Reading the claims in light of the specification, we conclude that one skilled in the art
would understand that the claimed volumes differ in their percentage loadings of
conductive or semiconductive particles. Therefore, we reverse the indefiniteness
rejection of claims 5-20 and 30-32.
Anticipation Rejection of Claims 5-10 and 31 over Kouchich
We address the main point of contention between the examiner and the
appellants. The examiner asserts, "[t]he glass layer (labeled as 9 and shaded dark by
the Examiner - see Appendix) near electrode 3 is a distinct layer where it is devoid of
the conductor particles." (Examiner's Answer at 5.) The appellants argue, "Kouchich,
et al. only shows one composition, and therefore fails to anticipate the invention. . . ."
(Appeal Br. at 13.)
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). Here, claim 5 specifies in pertinent part the following limitations: "a layer of
neat dielectric polymer or glass distinct from the layer of variable voltage material and in
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007