Appeal No. 2001-0964
Application No. 09/069,442
nickel ions as required by the claim under review. To the
contrary, patentee explicitly discloses cobalt, nickel and
cadmium as among the many metals, including the here claimed
iron, which are listed for use as a hardener in his
electroplating bath (e.g., see lines 42-55 in column 2).
On page 10 of the answer, the examiner responds to the
appellant’s above noted argument with the following rebuttal:
Korbelak et al. on col. 2, lines 42-55 merely disclose a
laundry list of additives which may or may not be added to
the electroplating bath. Korbelak et al. do nothing to
specify which of said metals indicated in col. 2, lines 42-
55 are most desirable and it is therefore left to one of
ordinary skill in the art to determine which of said metals
to use in an electroplating bath.
The examiner’s rebuttal is not persuasive of his
anticipation finding. There is simply nothing in the Korbelak
reference, including the examples, which “clearly and
unequivocally” discloses the here claimed bath or directs those
skilled in the art to the here claimed bath “without any need for
picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”
In re Arkley, 455 F.2d at 587-88, 172 USPQ at 526. Instead, the
here claimed bath is obtained only by picking, choosing and
combining selected compounds from among the many disclosed by
Korbelak.
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