Appeal No. 1996-3052
Application 08/064,639
We fail to find any of these Examiner's arguments
persuasive as to the matter of the prior art leading one of
ordinary skill in the art to make the modification proposed by
the Examiner. The Federal Circuit held that the totality of
the record must be considered and the Board erred by finding a
claimed difference a matter of design choice on the basis that
the Appellants' specification is silent as to any purported
advantages of the claimed differences. In re Chu, 66 F.3d
292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995). Fur-
thermore, a "finding of 'obvious design choice' [is] precluded
where the claimed structure and the function it performs are
different from the prior art." Chu, 66 F.3d at 299, 36 USPQ2d
at 1095, citing In re Gal, 980 F.2d 717, 719, 25 USPQ2d 1076,
1078 (Fed. Cir. 1992).
Upon our review of the prior art and Appellants'
specification, we note that the admitted prior art fails to
teach a one piece electrode plate as well as a one piece
electrode plate having different thicknesses and steps having
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