Ex Parte UZOH et al - Page 8




         Appeal No. 2003-1980                                                       
         Application No. 09/351,868                                                 
         treatment is equivalent to the claimed layer, and that the idle            
         running contact roller is equivalent to the substrate of the               
         appealed claims.  (Examiner’s Answer, page 6, lines 5-15).                 
              The appellants, on the other hand, again maintain that the            
         metal pieces of Wahlbeck are not covered by the instant claims,            
         that Wahlbeck has no relevance to the instant claims, and that             
         there is no teaching that Wahlbeck operates as the instant claims          
         recite.  (Appeal Brief, page 5, lines 12-24).                              
              Again, we agree with the appellants.  Wahlbeck discloses              
         annealing metal jewelry in deionized water (column 7, lines 19-21          
         and 55-57).  However, we find that the wire, resting on the                
         running contact roller, is not equivalent to, and does not teach,          
         the claimed metal layer plated on a workpiece having an insulating         
         substrate.   Accordingly, we reverse this rejection.                       
              C. The Rejection of Claims 17 and 18 under 35 U.S.C. §103(a)          
         as being unpatentable over Allain or Wahlbeck in view of Foreman.          
              The examiner has found that Foreman teaches the use of                
         propylene glycol in a metal treating fluid.  Thus, the examiner            
         concludes, it would have been obvious to use a cleaning and                
         annealing fluid of propylene glycol in the Allain or Wahlbeck              
         processes.  (Examiner’s Answer, page 7, lines 6-10).                       
              The appellants urge, again, that Allain and Wahlbeck are              
         inapplicable.  (Appeal Brief, page 6, lines 15-17).                        


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