Ex parte ONISHI et al. - Page 16




         Appeal No. 1998-2948                                                      
         Application 08/400,861                                                    

         method provides superior results over aluminum alloys                     
         containing tantalum, which is the closest prior art (RBr2;                
         2dSRBr3).                                                                 
              The rejection is over Kiyota in view of the secondary                
         references.  Thus, the discussion of aluminum/tantalum alloys             
         is not relevant.  It is sufficient that one of ordinary skill             
         in the art would have been motivated to substitute an                     
         aluminum/rare earth element alloy for the aluminum alloy in               
         Kiyota to achieve low specific resistivity to shorten the                 
         delay time, which is one of the goals of Appellants' method               
         (e.g., specification, p. 5).  The combination need not teach              
         the properties of the anodic oxidation film, which are, in any            
         case, not claimed.                                                        
              It is argued that breakdown voltage varies in a nonlinear            
         fashion with anodic oxidation film thickness and this                     
         relationship was not recognized by the prior art (Br9; Br10).             
         Appellants argue that they have demonstrated the benefits of              
         an anodic oxidation film having a thickness of 200 Å or more              
         (RBr3-4).                                                                 
              The breakdown voltage characteristic is not claimed, nor             
         are any physical properties of the anodic oxidation film                  

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