Ex Parte STEINER et al - Page 2




          Appeal No. 2004-0283                                                         
          Application No. 09/12,638                                                    


               In the rejection of the appealed claims, the examiner does              
          not rely upon prior art.                                                     
               Appellants' claimed invention is directed to a component for            
          use in manufacturing printed circuit boards.  The component                  
          comprises a sheet of copper foil in contact with a metal support             
          and having provided on its other surface a partially cured,                  
          preformed adhesive epoxy resin film.  Allowed claim 53 specifies             
          only one sheet of copper foil in contact with the metal support.             
          Appealed claims 61 and 62, which depend upon allowed claim 53,               
          further define copper sheets on each side of the metal substrate.            
               Appealed claims 61 and 62 stand rejected under 35 U.S.C.                
          § 112, first paragraph, description requirement.                             
               Appellants submit at page 3 of the principal brief that                 
          "[c]laims 61 and 62 stand or fall together."                                 
               We have thoroughly reviewed the respective positions                    
          advanced by appellants and the examiner.  In so doing, we find               
          ourselves in agreement with appellants that claims 61 and 62 do              
          not run afoul of the description requirement of 35 U.S.C. § 112,             
          first paragraph.  Accordingly, we will not sustain the examiner's            
          rejection.                                                                   
               According to the examiner, since the appealed claims "would             
          encompass laminates having one coated copper foil sheet and one              


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