Appeal No. 2002-2152
Application No. 08/701,764
The examiner admits that Parker does not describe a
conductive coating as recited in the appealed claims. (Answer,
page 4.) Nevertheless, the examiner attempts to make up for
this difference by relying on the teachings of Forde and Tang.
Specifically, the examiner held (id.):
Forde et al teach providing a conductive shroud around
a distal cathode (see figure 8, element 21, lines 11-
98 on page 3 thereof). Tang et al teach providing an
electrode as a coating on the surface of an insulator
(see figure 3a and column 4, lines 12-34, wherein the
anode is formed as a coating). It would have been
obvious to form the conductor as a coating on the
insulator, since this is a known structure which
supports and fixes the conductor and to provide a
distal cathode with a conductive shroud in the form of
a coating, since this confines the electric field and
to couple the outer conductor of a coaxial cable to
the cathode, since this is a standard configuration
and prevents interference with the signal to the
anode, thus producing a device such as claimed.
This position lacks merit. The examiner has not identified
any acceptable reasoning or objective evidence to support the
notion that one of ordinary skill in the art would have been led
to combine the teachings of Parker, Forde, and Tang. 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.”); In re Rouffet,
149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998)(“T]he
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