Appeal No. 1997-3857
Application No. 08/220,286
We have carefully considered the claims, the applied
prior art reference, and the respective positions articulated
by appellant and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 8.
The examiner admits (Answer, pages 3-4) that Shikama has
no portion free from the insulative coating other than where
the electrodes are located. The examiner therefore asserts
(Answer, page 4) that "to cover or not cover additional
surfaces with the insulating material is a modification which
only requires routine skill in the art," and that "it would
have been obvious ... to provide the coating of Shikama et al.
on all portions of the body except for the outer peripheral
edge for the purpose of lowering the manufacturing cost of the
device." Further, the examiner states (Answer, page 5) that
the proposed modification is not contrary to the express
teachings of the reference because "one of ordinary skill in
the art would realize that in order to reduce cost, a
compromise to one advantage may be necessary in order to
achieve a desired result while other advantages are
maintained."
3
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