Appeal 2006-1078
Application 09/425,694
The rejection is reversed.
Claims 12-15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pirooz
in view of Verhaverbeke and further in view of Berman or Davison.
According to the examiner, the combination of Pirooz et al and Verhaverbeke et
al teach all of the limitations of claims 12-15, except the circulating of treatment liquids
of the baths by taking a part from each of the baths, filtering and returning the part to the
corresponding treatment bath. The examiner’s reliance on Berman and Davison is
limited to a teaching of reducing contamination in treatment baths using recirculation.
Having concluded that the examiner has not shown the requisite motivation to
combine the teachings of Pirooz et al and Verhaverbeke et al, we find that the examiner
has failed to establish a prima facie case of obviousness as to claims 12-15 for the
reasons set forth above with respects to claims 1-9 and 11.2
The rejection is reversed.
against its teacher’."))
2 We note that claims 1-9 and 11 use the introductory language “consisting of while claims 12-
15 use the language “comprising” which opens the claims to additional steps.
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