Appeal No. 2001-0964
Application No. 09/069,442
For example, a zirconium compound must be selected from many
other compounds as the second component of patentee’s bath and
combined with an iron compound which itself must be selected from
the many other compounds listed as patentee’s fifth component
while simultaneously avoiding use of the cobalt, nickel and
cadmium compounds which are also taught by patentee as effective
ingredients for use as his fifth component. This is improper
under 35 U.S.C. § 102. Id. Indeed, as aptly stated by the
examiner in the aforenoted quotation from page 10 of the answer,
“it is . . . left to one of ordinary skill in the art to
determine which of said metals [disclosed by Korbelak] to use in
an electroplating bath.” Such a determination relates to
obviousness under Section 103 rather than anticipation under
Section 102.
In light of the foregoing, it is apparent that the
examiner’s finding of anticipation is improper. We cannot
sustain, therefore, the examiner’s Section 102 rejection of
independent claim 4 or of claims 7, 9, 13, 14, 20 and 21 (which
depend from claim 4) as being anticipated by Korbelak. Likewise,
we cannot sustain the examiner’s alternative Section 102
rejection of claims 5, 6 and 8 (which depend from claim 4) as
being anticipated by Korbelak.
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