Appeal No. 2001-0789 5
Application No. 09/106,625
material forming a pair, with the two layers of the pair having different conductivity. See
column 2, line 65 to column 3, line 8. The only material specifically taught by Bennett is
nickel foil. See column 3, line 13.
Although the examiner proposes to combine the teachings of the references to
obtain the specific layers required by the claimed subject matter, presumably by inserting
the carbon layer over the cobalt layer, on the record before us there is no rationale or logic
to explain why one having ordinary skill in the art would combine the references in the
manner suggested by the examiner except based on the hindsight suggestion of the
specification. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999) ("[T]he best defense against the subtle but powerful attraction of a hindsight-
based obviousness analysis is rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references").
The references to Mototani and Junkers are not directed to coatings on a steel casing
or collector and accordingly fail to overcome the shortcomings of the other references
discussed herein.
DECISION
The rejection of claims 1, 5 through 7, 9 through 15, 18 through 23 and 25
under 35 U.S.C. §103(a) as being unpatentable over Schneider in view of Canada ‘697,
further in view of Bennett and further in view of Mototani is reversed.
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