Appeal No. 1998-3320
Application 08/417,017
Rejection of claim 15
Claim 15 requires that the conductive pigment comprises a
material selected from a Markush group which does not include
metals. Tsunaga’s disclosure is directed toward solving the
problem of oxidation of copper, and his approach is to coat
the copper partially or totally with silver (col. 1, lines 22-
23 and 50-52, and 64-67). The examiner relies upon Baigrie,
who discloses a conductive polymer composition comprising an
essentially amorphous thermoplastic resin, a thermosetting
resin and a conductive filler (col. 2, lines 11-17). The
examiner argues that because Baigrie’s disclosed fillers
include copper, silver, and some of the materials recited in
the appellants’ claim 15, Baigrie provides a teaching that all
of these materials are functional equivalents (answer, page
5). Baigrie may indicate that all of these materials are
functional equivalents in his composition. However, the
examiner has not explained why, considering that Tsunaga’s
disclosure is specific to copper particles coated partly or
totally with the silver material, Tsunaga and Baigrie would
have led one of ordinary skill in the art to substitute one of
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