Ex Parte Murofushi et al - Page 21



              Appeal No. 2007-1530                                                                                     
              Application 10/095,112                                                                                   

              the desire to reduce the weight of the connector housing of the Admitted Prior Art                       
              would have motivated the artisan, having knowledge of Pyzik, to make the                                 
              connector housing with one of Pyzik’s ceramic-metal composite materials.7                                
                     The Examiner initially relied on Pyzik for its teachings regarding the                            
              stiffness provided by the ceramic-metal composite materials.  Specifically, in the                       
              (non-final) Office Action from which this appeal is taken, the Examiner held that                        
              “it would have been obvious to one of ordinary skill . . . to modify the connector                       
              housing of Applicant’s admitted prior art by making it of metal composite material                       
              comprising lightweight metal and hollow ceramics grains as taught in Pyzik et al.                        
              to increase the stiffness of the housing” (Office Action 3).  This reasoning is                          
              unpersuasive because the “stiffness” property of concern to Pyzik, i.e., “specific                       
              stiffness,” represents the resistance of a component to deflection by inertial loads                     
              generated by accelerations and decelerations (col. 7, l. 66 to col. 8, l. 1), a property                 
              having no relevance to the connector housing of the Admitted Prior Art.                                  
                     However, in the Answer the Examiner additionally relies on Pyzik’s                                
              disclosure that the disclosed ceramic-metal disk substrates are light in weight:                         
                     [T]he use of metal-ceramic composite [in Pyzik] is specifically for                               
                     improving the stiffness and because of its lightweight [sic – light                               
                     weight] (Column 2, Lines 11-13; Column 3, Lines 20-24; and                                        
                     Column 7, Lines 22-34).  Appellant’s reason for using the same                                    
                     material is in fact because of its lightweight.  Therefore, the use of this                       
                     material is reasonably pertinent to the particular problem with which                             
                     the applicant was concerned.  Furthermore, it has been held to be                                 
                     within the general ordinary skill of a worker in the art to select a                              
                                                                                                                      
                     7  The Examiner does not argue cost savings as a motivation.                                      
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