Appeal No. 1998-2337
Application 08/651,442
maintained at a constant potential versus the reference electrode in order that the electrolytic plating of a
metal from a solution is automatically controlled when the apparatus is in operation. Accordingly, the
burden is on the examiner to establish that the apparatus containing a “pH . . . electrode of conventional
construction,” which is reference electrode or probe 34, and which is connected to cathode 21 through
reference circuit 46, as disclosed by Biles (col. 4, lines 50-51, and col. 4, line 57, to col. 6, line 54) is in
fact an identical description of an apparatus containing “a pH sensitive electrode” as the reference
electrode and “a potentiostatic unit,” arranged as required by claim 1.
We are of the opinion that, on this record, the examiner has not carried his burden (answer,
pages 4 and 8-9). In considering the whole of the disclosure of Biles, we find that the disclosure with
respect to the reference electrode or probe, its interaction with the cathode and the result of that
interaction with respect to the circuitry of the apparatus of the reference (e.g., col. 5, line 1, to col. 6,
line 44), can be summarized by the stated objective that
[t]he other improvement comprises probe means in contact with the solution for providing a
signal in response to presence of silver ions in the solution adjacent to the cathode, and
means for repeatedly driving a plating current through the solution in response to the signal
and for terminating the plating current after a discrete period of time, until the probe means
again provides the signal in response to presence of silver ions adjacent to the cathode. [Col.
3, lines 6-14; emphasis supplied.]
Thus, on this record, it reasonably appears that one of ordinary skill in this art would find from the
operation of the apparatus as described in Biles, that the reference electrode or probe, regardless of
construction, and the circuitry to which it is attached do no more than trigger the delivery of plating
current for a set period of time in response to the presence of silver ions, such that the reference
describes to that person no more than a conventional pH electrode which provides a single signal in
response to the mere presence of silver ions, and which is attached to circuitry that activates a pre-set
plating current in response to that signal, wherein the plating current would flow for a pre-set period of
time.
We find that the examiner has not established by explanation or evidence that in the context of
this disclosure of Biles, the “pH electrode . . . of conventional construction” would reasonably be
interpreted by one of ordinary skill in this art to be a “pH sensitive electrode,” or that the circuitry to
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