Ex parte GUHL et al. - Page 12



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




                  Beckwith also teaches an acidic plating bath for                      
            electro-depositing tin-containing salts (Example 2, col.                    
            9), surfactants (col. 2, line 40), and a fluoride-                          
            containing electrolyte.  Beckwith's source of fluoride                      
            is, however, not limited to acids. Salts (col. 4, lines                     
            16-38), including "complex salts"(col. 4, line 25) of                       
                                   -                              -2                   
            fluoborates (i.e., BF ) and fluosilicates (i.e., SiF ),4                             6                     
            may also be used.  Beckwith suggests that using these                       
            types of complex salts is an equivalent alternative to                      
            using the acid counterpart.  Given this suggestion, to                      
            one with ordinary skill in the art with Beckwith in hand,                   
            it would have been prima facie obvious to substitute the                    
            acid (e.g., HBF ) used in Kirman with a complex salt, as                    
                            4                                                           
            claim 3 prescribes, and achieve the same electrolytic                       
            result.                                                                     

                  This decision contains a new ground of rejection                      
            pursuant to 37 C.F.R. ' 1.196(b) (amended effective Dec.                    
            1,                                                                          
            1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197                     
            (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office                     

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