Ex Parte KARNER - Page 8



          Appeal No. 2004-0759                                                        
          Application No. 09/363,038                                 Page 8           

          disclosed by Oshima would not meet that limitation.1   With                 
          respect to claim 22, Oshima describes an electroplating tank,               
          which would have fairly suggested the use of an anode as part of            
          such a structure to one of ordinary skill in the art.2                      
          Consequently, appellant’s arguments are not persuasive.  It                 
          follows that we will sustain the examiner’s rejection of claims             
          14-16, 22 and 23.                                                           

                        Rejection of claims 17, 18 and 24-27                          
               Each of claims 17, 18 and 24-27 require conduits connecting            
          the electro-coating tank and the pickling tank directly or via a            
          metal dissolving tank.  The examiner has not fairly explained how           
          the teachings of Ishibashi with respect to an electrolyzer that             
          is disclosed as being useful for treating spent pickling liquor             
          would have suggested conduit connection(s) between the                      
          electroplating tank (14) and surface treatment (pickling) tank              
          (9) of Oshima.  In this regard, the electrolyzer of Ishibashi as            
          used in treating spent pickling liquor for recirculation to the             

               1 See column 6, lines 17-21 of Oshima.  We further observe             
          that Ishibashi discloses hydrofluoric acid, one of Oshima’s                 
          described acids, as a pickling liquor component.                            
               2 See, e.g., Kirk-Othmer, Encyclopedia of Chemical                     
          Technology, 3rd Ed., Vol. 8, p. 833 (copy attached).                        





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