Ex Parte TANI et al - Page 5




          Appeal No. 2003-0196                                                        
          Application No. 08/601,258                                                  


          references (Brief, page 4).  Appellants argue that there would be           
          no reasonable expectation of success since Wienand teaches                  
          formation of a platinum film with a desired TCR of 3850 ppm/K while         
          one using the process of Uriu would only expect to achieve the TCR          
          taught by Uriu, i.e., about 3700 ppm/K.  Accordingly, appellants            
          submit that Uriu actually “teaches away” from making the proposed           
          combination of references (id.).                                            
               Appellants’ arguments are not persuasive.  As correctly argued         
          by the examiner on page 6 of the Answer, the temperature-measuring          
          resistive elements and the methods of preparation disclosed by              
          Wienand and Uriu are the same or so similar that one of ordinary            
          skill in the art would have expected that the platinum film of              
          Wienand would have reasonably been expected to be deposited by the          
          method of Uriu, i.e., by applying and sintering an organoplatinum           
          compound.  Additionally, we note that Uriu specifically teaches the         
          equivalence of a plating method (which would include both                   
          evaporation and sputtering) and baking the coated and printed               
          metalloorganic platinum paste to form the desired temperature               
          detecting resistor film (see col. 2, ll. 46-51, and col. 8, ll. 7-          
          10).  As correctly noted by the examiner, “[a]n express suggestion          
          to substitute one equivalent process for another is not necessary           


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