Ex Parte Gotou et al - Page 16




                 Appeal No. 2003-2136                                                                                 Page 16                     
                 Application No. 09/562,952                                                                                                       


                 front end of the center electrode 4 so as to provide a noble metal portion 6."  Col. 3,                                          
                 ll. 36-39.  More specifically, the latter reference includes the following disclosure.                                           
                         In this instance, the laser beam welding is carried out by using YAG                                                     
                         (yttrium, aluminum and garnet) laser beams (L) emitting forty-eight shots                                                
                         at 11 mm underfocus (5 pps) with one shot energy and pulse duration as                                                   
                         7.5 Joules and 2.0 milliseconds, respectively, emitting forty-eight shots at                                             
                         11 mm underfocus (5 pps) with one shot energy and pulse duration as                                                      
                         7.5 Joules and 2.0 millseconds, [sic] respectively, emitting thirty-six shots                                            
                         at 2 mm center electrode diameter and just focus (12 pps) with one shot                                                  
                         energy and pulse duration as 5 to 6 Joules and 2.0 milliseconds                                                          
                         respectively, and emitting forty-eight shots at 2.5 mm center electrode                                                  
                         diameter and just focus (14 pps) with one shot energy and pulse duration                                                 
                         as 5.5 to 6.5 Joules and 2.0 milliseconds respectively.                                                                  
                 Col. 3, l. 59 - col. 4, l. 4 (emphases added).  In summary,  Matsutani carries out its laser                                     
                 welding in an energy range of 5 - 7.5 J.  We are not persuaded that it would have been                                           
                 desirable to have substituted the energy range used by the latter reference, which does                                          
                 not involve an iridium-rhodium alloy, for the energy used by Oshima '198 when the                                                
                 iridium-based alloy disclosed therein takes the form of an iridium-rhodium alloy, as                                             
                 suggested by Osamura.  The examiner does not allege, let alone show, that the addition                                           
                 of Oshima '569 would have suggested the desirability.  Therefore, we reverse the                                                 
                 rejection of claim 16.                                                                                                           


                                                               CONCLUSION                                                                         
                         In summary, the rejection of claims 7-15 and 17 under § 103(a) is affirmed.  The                                         
                 rejection of claim 16 under § 103(a), however, is reversed.  "Any arguments or                                                   








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