Ex Parte GIORIA - Page 13



          Appeal No. 2001-0964                                                        
          Application No. 09/069,442                                                  

          electroplating bath which include the ingredients required by the           
          here rejected claims.  Thus, it would have been obvious for one             
          with ordinary skill in the art to select from Korbelak’s                    
          ingredient-lists the specific ingredients under consideration               
          based upon patentee’s teaching that such ingredients are                    
          effective in his desired electroplating bath formulations.                  
          Merck & Co. v. Biocraft Labs., Inc., 874 F.2d at 807-08,                    
          10 USPQ2d at 1846.                                                          
               These specific ingredients include: a cyanide-containing               
          gold compound such as potassium gold cyanide as Korbelak’s first            
          component (e.g., see lines 50-54 in column 1); an iron compound             
          such as iron sulfate as patentee’s fifth component (e.g., see               
          lines 42-55 in column 2); a zirconium compound such as zirconium            
          sulfate as his second component (e.g., see line 57 in column 1,             
          lines 3-14 in column 2 and Table II in column 6); a citrate                 
          compound such as a metal citrate as patentee’s fourth component             
          (e.g., see lines 29-41 in column 2) or as patentee’s fifth                  
          component (again see lines 42-55 in column 2); and a weak acid              
          such as citric, malic, lactic, glycolic or tartaric acid as                 
          patentee’s third component (e.g., see lines 19-28 in column 2).             



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