Ex Parte JOHNSON et al - Page 4



         Appeal No. 2002-0834                                                       
         Application 09/275,386                                                     


              Here, Bohnen does not need to teach that the disclosed                
         benzotriazole is useful as a corrosion inhibitor for deoxidizing           
         aluminum.  All that is necessary is what the combined teachings            
         of Johnson in view of Bohnen would have suggested to those of              
         ordinary skill in the art.  In the instant case, we agree with             
         the examiner that because Bohnen teaches that the benzotriazole            
         is a useful stabilizer for hydrogen peroxide, it would have been           
         obvious to have exchanged the stabilizer in Johnson with the               
         benzotriazole of Bohnen.  We also find that the different etching          
         rates of Johnson and Bohnen (as alleged by appellants) would not           
         dissuade the skilled artisan from utilizing the benzotriazole of           
         Bohnen in the composition of Johnson.                                      
              We therefore affirm this rejection.                                   

         II.  The rejection involving Johnson in view of Bohnen and                 
              further in view of Ishizuka                                           
              Claims 4 and 8 are rejected in this rejection.                        
              The examiner relies upon Ishizuka for the teaching of the             
         use of propylene glycol as a stabilizer for hydrogen peroxide and          
         the examiner refers to column 7, lines 40-48 of Ishizuka.                  
         (answer, page 6).                                                          
              Appellants argue that the disclosure found in column 7                
         beginning at line 40 of Ishizuka does not indicate whether the             
         propylene glycol is used as a stabilizer for hydrogen peroxide or          
         as a dissolution accelerator for copper. (brief, page 14, reply            
         brief, page 4).                                                            
              In response, on page 9 of the answer, the examiner refers to          
         a partial sentence from column 7, beginning at line 40 of                  
         Ishisuka.  Hence, the examiner does not fully set forth the                

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