Ex parte ONISHI et al. - Page 15




         Appeal No. 1998-2948                                                      
         Application 08/400,861                                                    

         anodically oxidized (Br5).  It is also argued that the                    
         Examiner was incorrect in stating that anodically oxidizing an            
         aluminum film containing a rare earth element does not                    
         influence the properties of the film, and that the Examiner               
         was incorrect in stating that Appellants had not shown that               
         anodic oxidation would materially affect the properties of the            
         alloy (RBr2).                                                             
              Since anodic oxidation works on a number of different                
         aluminum alloys in Kiyota, there is no apparent reason why one            
         of ordinary skill in the art would be deterred from anodically            
         oxidizing the aluminum/rare earth element alloys of the                   
         secondary references when used in the environment of Kiyota.              
         Obviousness does not require absolute predictability of                   
         success.                                                                  
              Appellants argue that the anodic oxidation layer formed              
         on aluminum/rare earth element alloys have a greater                      
         dielectric breakdown voltage than layers formed on                        
         aluminum/tantalum alloys in Kiyota and one of ordinary skill              
         in the art would have no reason to expect the beneficial                  
         results resulting from anodic oxidation of an aluminum/rare               
         earth element alloy (Br6-7).  It is argued that the present               

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