Appeal No. 1998-2103 Page 5
Application No. 08/674,243
With these principles in mind, we consider the examiner's
rejection and appellant's argument.
Noting that "[a]mong the reasons Corwin uses the nickel
coating are that 'the resultant coating is hard, corrosion
resistant, directly solderable---' (Col. 2 lines 70-73),"
(Examiner's Answer at 3), the examiner alleges, "for at least
these reasons it would have been obvious to one of ordinary
skill in the art to provide the 'Prior Art' piezoelectric
silver electrodes with a nickel coating." (Id.) The
appellant argues, "[w]hile Corwin '762 does disclose that the
nickel coating placed over the silver electrode will result in
a hard, corrosion resistant, directly solderable, high tensile
strength coating, it provides no indication that such a
coating should be used to protect the silver electrode. It
only teaches that such a coating should be used when necessary
to prestress the spherical transducer." (Appeal Br. at 9.)
“Obviousness may not be established using hindsight or in
view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239 (citing
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