Ex Parte Rzeznik et al - Page 11


                   Appeal No. 2006-1079                                                                                           
                   Application No. 10/139,085                                                                                     

                   the silver ions will necessarily cause some degree of immersion plating.  The problem                          
                   with the examiner’s reasoning is that it fails to explain why one of ordinary skill in the                     
                   art, would have been motivated to “contact[] the metal with an immersion silver plating                        
                   bath for a period of time sufficient to deposit a desired thickness of silver by immersion                     
                   plating,” as required by the rejected claims.                                                                  
                          The rejection is reversed.                                                                              
                          In summary:                                                                                             
                                  The rejection of claims 1-6, 8, 10, 11, 19 and 21 under 35 U.S.C. § 102(e)                      
                          as anticipated by Whitney is affirmed as to claims 1-4, 6, 8, 10, 11, 19 and 21 and                     
                          reversed as to claim 5.                                                                                 
                                  The rejection of claims 14, 16 and 17 under 35 U.S.C. § 103 as                                  
                          unpatentable over Whitney as applied to claim 1 and further in view of Krulik is                        
                          reversed.                                                                                               
                                  The rejection of claim 22 under 35 U.S.C. § 103 as unpatentable over                            
                          Whitney as applied to claim 1 and further in view of Soutar is affirmed.                                
                                  The rejection of claims 1-6, 8, 10, 11 and 21 under 35 U.S.C. § 103 as                          
                          unpatentable over Kinase is reversed.                                                                   












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