Ex Parte HALG et al - Page 4



          Appeal No. 1998-1737                                                        
          Application No. 08/318,702                                                  

          second paragraph.  Nor will we sustain the examiner's § 103                 
          rejections based on Hoeschele.  We will, however, sustain the               
          examiner's § 103 rejection of claims 54 and 57-59 based on                  
          Münzmay.                                                                    
               We consider first the examiner's rejections under § 112,               
          second paragraph.  We do not subscribe to the examiner's position           
          that the claim 1 language "the adhesive strip . . . does not                
          deform when handled" is indefinite because "it is not clear under           
          what force the material maintains its shape" (page 4 of Answer,             
          first paragraph).  We concur with appellants that the examiner              
          has not established that, when the claim language is read in                
          light of the specification, one of ordinary skill in the art of             
          adhesives for placing glass modules in window frames would not              
          understand that the module would maintain its shape during normal           
          handling.                                                                   
               As for the "low molecular solid compounds" of claims 11 and            
          15, appellants have provided sufficient evidence in their Reply             
          Brief that one of ordinary skill in the art would be able to                
          reasonably ascertain the scope of the claimed isocyanates when              
          the specification and state of the prior art are taken into                 
          consideration.                                                              


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