Appeal No. 2003-1970 Page 3
Application No. 09/586,526
OPINION
The rejection is based on the substitution of gold for nickel in composite plating film 21
of Naoto. This substitution is necessary because the claims are directed to an orifice plate for an
ink-jet pen having an exposed coating of a precious metal-polymer alloy. As recognized by the
Examiner, film 21 of Naoto is a nickel-Teflon coating and not a precious metal-polymer alloy
coating.3
The Examiner relies upon Aylward as evidence of the obviousness of the substitution.
According the Examiner, “it would have been obvious to one of ordinary skill in the art, at the
time the invention was made, to have substituted gold for nickel, as taught by Aylward, in the
mixture of [Naoto], because Aylward teaches that gold or nickel would be used as alternatives of
each other.” (Answer, pp. 3-4). The portion of Aylward relied upon by the Examiner states in
part:
Virtually any metal which forms an ion in solution can be electroplated on
a conductive substrate. The catalysts can be any material which will favorably
influence an electrochemical reaction, such as copper, gold, nickel, silver,
platinum, palladium and the like. ... The screen electrode may be described as a
conductive screen as a support for a catalyst-Teflon mixture. Teflon or another
polymer is utilized for the purpose of providing a hydrophobic layer within the
electrode.
3We interpret “precious metals” as meaning gold, silver, ruthenium, osmium, rhodium, iridium, palladium,
and platinum. This definition encompasses those metals stated in the specification as being “precious metals”
(specification, p. 5, ll. 4-5: gold, rhodium, and palladium) as well as other metals often referred to as precious metals.
See George Brady and Henry Clauser, Materials Handbook 644 (12th ed. 1986); Hackh’s Chemical Dictionary 543
(Julius Grant, ed., 4th ed. 1969); McGraw-Hill Dictionary of Scientific and Technical Terms 1526 and 1564 (Sybil
Parker ed., 5th ed. 1994). A copy of each of these documents accompanies this decision.
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