Ex Parte Goerenz et al - Page 6



          Appeal No. 2005-1577                                                        
          Application No. 09/581,159                                 Page 6           

          direct connection, as an alternative to the capacitive connection           
          shown in Figure 4, coating 212 and connector 224 would be                   
          overlapping, just like coating 112 and connector 124 depicted in            
          the direct connection of Figure 3 . . .” (answer, page 6).                  
               Moreover, the examiner acknowledges that Winter does not               
          disclose appellants’ claimed step of “removing the transparent              
          surface coating proximate at least one edge of the coated pane to           
          create an exposed region between about 0.1 mm and about 5 mm from           
          a peripheral edge of the pane along a main surface of the pane.”            
          See independent claim 1 and the removing step as recited in                 
          independent claim 18.  In addition, the examiner acknowledges               
          that Winter does not disclose that the connector (224) in the               
          unillustrated optional direct connection embodiment with two                
          glass plies is an opaque protective layer that is applied after a           
          removal step as required in appellants’ claim 1.  Nor does Winter           
          teach that connector (224) is substantially impermeable to water            
          vapor as is appellants’ claimed protective layer as applied in              
          the method of appellants’ claim 1.                                          
               The examiner further maintains (answer, pages 7 and 8) that:           
                    It is noted the present specification teaches the                 
               protective layer being an electro conductive ceramic                   
               paint (p. 3, lines 5-7 and 24-25).  Therefore, the                     
               skilled artisan would have readily appreciated that the                
               electro conductive ceramic paint layer of Winter would                 






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