Appeal No. 2006-0313
Application 10/300,276
(appealed claims 5 and 7), and contrary to appellants’ arguments, Dubin teaches that these agents
respectively provide phosphorous and boron ions to the solution, as the examiner points out.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Dubin with appellants’ countervailing arguments
for non-anticipation in the brief, and based thereon, conclude that the claimed invention
encompassed by appealed claims 1 through 30 would have been anticipated as a matter of fact
under § 102(e) (2002).
The examiner’s decision is affirmed.
Other Issues
We have affirmed the decision of the examiner with respect to all of the claims on appeal
and thus, we decline to exercise our authority under the provisions of 37 CFR § 41.50(b)
(September 2004) and enter on the record new grounds of rejection based on Malik and Dubin,
leaving it to the examiner to address these matters upon further prosecution of the appealed
claims subsequent to the disposition of this appeal.
We find that the electroless cobalt plating solutions disclosed by Malik, as explained by
the examiner (answer, pages 3-4), would have described and thus anticipated the claimed
electroless cobalt plating solutions encompassed by appealed claim 1, as we have interpreted this
claim above, within the meaning of 35 U.S.C. § 102(b). Indeed, each of Malik Examples I-III
discloses an electroless cobalt plating bath which exists per se before the disc is placed therein,
see Exxon Chem. Pat., 64 F.3d at 1556-58, 35 USPQ2d at 1803-05, and are described as “a
cobalt bath” (e.g., col. 9, ll. 8-9). Furthermore, the language of appealed claim 1 does not
exclude the presence of sodium citrate (see above pp. 3-5). We find no basis in the claim
language or in the written description in the specification on which to read the disclosure that
certain “agents have been found to act as both a buffer and a complexing agent, which eliminates
the need to add an additional complexing agent (such as citric acid discussed above)”
(specification, page 6, ll. 16-18) into claim 1 as a limitation as appellants argue (brief, pages 8-
9). See Morris, 127 F.3d at 1054-55, 44 USPQ2d at 1027; Comark Communications, Inc. v.
Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1117, 1124 (Fed. Cir. 1998); In re Paulsen,
30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994); In re Van Genus, 988 F.2d 1181,
1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993); Zletz, 893 F.2d at 321-22, 13 USPQ2d at 1322.
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