Ex Parte Goerenz et al - Page 13



          Appeal No. 2005-1577                                                        
          Application No. 09/581,159                                Page 13           

          The examiner relies on Winter for reasons discussed in the                  
          answer, as outlined above for the separate rejection of claim 1,            
          and relies on Shukuri and Marquardt for teaching a grinding step            
          in forming glass laminates.  However, the examiner does not                 
          fairly explain why one of ordinary skill in the art would combine           
          Shukuri’s method of forming a stepped portion of a windowpane by            
          grinding that is used in reducing discontinuities between a                 
          vehicle body and a window pane and/or why one of ordinary skill             
          in the art would employ the pane grinding step of Marquardt that            
          is used in conjunction with a specified emulsion, such as a                 
          transparent or translucent ethylene polymer that breaks upon                
          contact with perimeter edge surfaces for penetrating into the               
          micro structure of a perimeter edge, with the antenna connector             
          of Winter and the method of applying such a connector.  The                 
          examiner’s proposed benefit of reducing wind noise and reducing             
          water penetration as a rationale (answer, pages 10 and 11) does             
          not address how one of ordinary skill in the art would have been            
          led to use that proposed grinding step in conjunction with the              
          antenna connector of Winter such that the antenna connector                 
          application could be used therewith in a fashion such that the              
          antenna connector would function as an opaque protective layer as           
          claimed yet continue to function as the requisite antenna                   





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