Appeal No. 2006-2198 Page 7
Application No. 10/074,499
associated with using the gold beads which Kim et al. attempts to resolve. Thus, there is
nothing to motivate a person of ordinary skill in the art to use conductive polymer beads
to replace the gold particles described by Kim et al.” Reply Brief, page 19.
We do not find this argument persuasive. Kim describes the problem that results
from using gold beads by themselves in the disclosed device. Kim also discloses that
attaching polyaniline “strings” to the gold beads overcomes that problem. Sigal
discloses that preparation of conductive microparticles from both gold and organic
conductors (e.g., polyaniline) was well known in the art. We therefore agree with the
examiner that those of skill in the art would have found it obvious to substitute beads
made from an organic conductor (e.g., polyaniline) for the gold beads used by Kim, and
attach polyaniline strings to the organic beads, with a reasonable expectation that the
organic beads would perform the same function as the gold beads.
Since conductive microparticles made from gold and conductive microparticles
made from organic conductors (e.g., polyaniline) were taught in the art to be
equivalents, no express suggestion to substitute one for the other is required. See In re
Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982) (“Because both [prior art
references] teach a method for separating caffeine from oil, it would have been prima
facie obvious to substitute one method for the other. Express suggestion to substitute
one equivalent for another need not be present to render such substitution obvious.”)
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