Appeal No. 2002-1401
Application No. 09/187/226
and ensure good transmission of ultrasounds (page 5).
Premkumar’s substrate, however, is a metal matrix composite
having high thermal conductivity coupled with a coefficient of
thermal expansion which approximates those of ceramics and
semiconductor materials typically used in electronic packaging
(col. 2, lines 31-36).
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The examiner has not explained why the disclosure in
FR ‘878 of coating an aluminum or aluminum alloy ultrasound weld
electrode or electrode insert with Al2O3 or TiO2 would have fairly
suggested, to one of ordinary skill in the art, coating with TiO2
Premkumar’s substrate which is a different material (metal matrix
composite versus aluminum or aluminum alloy) having different
desired properties (high thermal conductivity coupled with a
coefficient of thermal expansion which approximates those of
ceramics and semiconductor materials typically used in electronic
packaging, versus abrasion resistance and good transmission of
ultrasounds). Hence, the examiner has not carried the initial
burden of establishing that the teachings of the references
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