Ex Parte KAMIYAMA et al - Page 5




              Appeal No. 1999-0761                                                                         5               
              Application No. 08/174, 957                                                                                  

              solvent treatment, as usual,  removes the bulk of oils and greases.  This is followed by                     
              mild etching in alkaline cleaner, containing typically 25 g/L of sodium carbonate and 25                     
              g/L of trisodium phosphate at 70-85o C for 1 to 3 min.”  Id.                                                 
              Based upon the above findings, we conclude that the person having ordinary skill                             
              in the art would be directed to use the specific alkaline etchant for aluminum alloys                        
              disclosed by Lowenheim at page 90 or would be directed to add a chelating agent to the                       
              etchant disclosed by the admitted prior art.  On the record before us, however, the fact                     
              that other etchants are known or that chelating agents may be added to etchant                               
              compositions, does not provide the requisite motivation to delete the aqueous acidic                         
              etching solution having a pH of 2 or less from the admitted prior art, and add a chelating                   
              agent thereto in order to result in a single step process of exposing the surface to an                      
              aqueous solution containing a chelating agent wherein the aqueous solution consists of                       
              a solution having a pH of 7 or higher as required by the claimed subject matter.  See In                     
              re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best                          
              defense against the subtle but powerful attraction of a hindsight-based obviousness                          
              analysis is rigorous application of the requirement for a showing of the teaching or                         
              motivation to combine prior art references.")                                                                
              As to the second rejection directed to Chakrabarti, the reference is directed the                            
              preparation of the aluminum alloys of the claimed subject matter and does not                                
              contribute in any manner to the deficiencies in combining the admitted prior art with                        
              Lowenheim.                                                                                                   







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