Ex Parte Bokisa et al - Page 5

                Appeal 2006-3193                                                                                 
                Application 10/772,595                                                                           
                on plating efficiency and an adverse effect on the bonding of the plated alloy                   
                and substrate (Br. 9-10).                                                                        
                       The Examiner contends that one of ordinary skill in the art would                         
                have been motivated to have included an acetylenic brightener in the method                      
                of JP ‘693 in view of Passal’s disclosure that such brighteners, when used                       
                alone or in combination in a nickel-cobalt containing bath composition, may                      
                produce semi-lustrous, fine grained deposits (Answer 6).                                         
                       Based on the contentions of the Appellants and the Examiner, the                          
                issue for us to decide is:  Do the facts and reasons relied on by the Examiner                   
                provide a reasonable basis to conclude that one of ordinary skill in the art                     
                would have been motivated to combine the teachings of the references in the                      
                manner claimed?                                                                                  
                       For the reasons well stated in the Examiner’s Answer, and further                         
                discussed below, we answer this question in the affirmative.                                     
                            FINDINGS OF FACT – CLAIM INTERPRETATION                                              
                    The Specification includes the following disclosure:                                         
                 1) “The present invention provides quaternary alloys containing at                              
                    least nickel and cobalt. . . .  At least two of many other alloy metals, such                
                    as iron and boron, are also contained in the quaternary alloys.  In this                     
                    context, the quaternary alloys contain at least four metal components.”                      
                    (Specification 2:3-7).                                                                       
                 2) “The two or more alloy metals are any metals that can be                                     
                    electroplated in a compatible manner with nickel and cobalt generally                        
                    include transition metals.  Examples of transition metals include . . .                      
                    boron, . . . zinc, and the like” (Specification 5:8-14).  “Examples of alloy                 



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