Appeal No. 2001-0964
Application No. 09/069,442
In support of his opposing view, the appellant argues that,
“of all the examplary [sic] electroplating solutions disclosed by
Korbelak . . . , eleven (11) of the seventeen (17), or 65%,
contain either cobalt or nickel” and that “[t]herefore, one of
ordinary skill in the art would not look to Korbelak . . . for
guidance on producing an electroplating bath which is free of
cobalt, nickel and cadmium” (brief, page 8). While the
appellant’s finding regarding the examples of Korbelak may be
correct, it does not support the subsequent conclusion that one
“would . . . not look to Korbelak . . . for guidance on producing
an electroplating bath which is free of cobalt, nickel and
cadmium.” On the contrary, by the appellant’s implicit
concession, six of patentee’s exemplary electroplating solutions
do not contain cobalt, nickel or cadmium. This fact would have
suggested a formulation free of these ingredients and would have
led an artisan to reasonably expect such a formulation to be
successful. See In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1680-81 (Fed. Cir. 1988)(for obviousness under Section 103,
all that is required is a reasonable expectation of success).
The appellant’s other arguments concerning the Section 103
rejections based on Korbelak alone are unpersuasive for the
reasons expressed by the examiner in the answer.
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