Appeal No. 2001-0106
Application 08/855,811
As noted above, without the required particularized finding along the lines of that
suggested by Keller or W.M.S. Gaming as to why one of skill in the art would modify the
references, we are constrained to reverse the §103 rejection over Thomson in view of
Hahn (Rejection G).
Discussion of Category C Rejections
Rejection C
Claims 6 and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Iliou in
view of Thomson.
In support of this rejection, the Examiner notes the following:
Iliou et al (U.S. 4,616,413 – cited and supplied by appellants) disclose a basic
element of the type envisioned and claimed viz. composed of a metallic substrate
adhered to a conductive substrate via the intermediary of a conductive adhesive.
(Figure 1, abstract, column 2, lines 22-60). The Examiner’s position is that it
would have been obvious to one of ordinary skill in this art to employ the
aminosilane compound/coupling agent of Thomson for its documented beneficial
coupling and/or adhesion promoting function in/in [sic] conjunction with the
invention of Iliou et al. (Examiner’s Answer, page 5, line 15 – page 6, line 2).
In response, the Appellant does not dispute the interpretations of Iliou and
Thomson, but instead notes:
It is submitted that this [combination] points out exactly the deficiency of
combining these references. If one were to employ the coupling agent of
Thomson, one would expect an improvement in adhesion. Such improvement is
not obtained. Moreover, there is nothing in Thomson at all that would lead one to
believe that there would be an increase in any electrical properties, much less an
improvement in electrical degradation over a period of time. Thus, clearly, since
there is no suggestion of such a combination and that any combination would,
according to any suggestion, result in an increased adhesion which does not
happen and something that is not suggested does happen, indicates the
unobviousness. (Appeal Brief, page 12, line 24 – page 13, line 3).
As discussed above, the Examiner has considered and was not persuaded by
the declaratory evidence presented by Appellants relating to bond strength. We have
also reviewed the declarations and find them deficient as previously discussed. Further,
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