Ex parte GUHL et al. - Page 11



            Appeal No. 1997-0330                                                        
            Application 08/493,758                                                      




            that, given the teachings of Kirman, one of ordinary                        
            skill would have selected the two recited salts.  This                      
            has not been done and we therefore reverse this                             
            rejection.                                                                  

            II. New Ground of Rejection under 37 C.F.R. ' 1.196(b)                      
                       Under the provisions of 37 C.F.R. ' 1.196(b), we                 
            make the following new ground of rejection.                                 

            Obviousness                                                                 
                  Claims 1 and 3 are rejected under 35 U.S.C. ' 103 as                  
            being unpatentable over Kirman in view of Beckwith [U.S.                    
            3,769,182].                                                                 
                  For the reasons set forth supra, Kirman renders                       
            prima facie obvious the claimed acidic electrolyte                          
            composition comprising tin salts, surfactants and                           
            fluoride complexes at the claimed concentration.  Kirman                    
            however does not teach employing fluoride salts in the                      
            plating bath as prescribed by claim 3.  Kirman (col. 5,                     
            lines 30-42) teaches only acids as a source for the                         
            fluoride ions.                                                              


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