Appeal No. 2006-1079
Application No. 10/139,085
Claims 4 and 5
Appellants argue that Whitney fails to recite any of the azole compounds
enumerated in appellants’ claims 4 and 5. We are in agreement with the examiner that
the claim 4 limitation of an arylimidazole is anticipated by Whitney’s disclosure of a
heterocyclic/adhesive intergranular etching composition wherein component (c) is
benzimidazole. However, we reverse the rejection as to claim 5.
The examiner bears the initial burden of presenting a prima facie case of
anticipation. In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986).
Only if that burden is met, does the burden of going forward shift to the applicant. Id. In
this case, the examiner fails to present a prima facie case of obviousness with respect to
claim 5, since the examiner does not identify that portion of Whitney ‘314 relied upon in
rejecting claim 5. It is only in response to appellant’s arguments that the examiner refers
to col. 10, lines 9-15 of Whitney for a teaching of “the use of C1-4 substituted imidazoles.”
Examiner’s Answer, p. 8. Moreover, we note that the use of C1-4 substituted imidazoles is
described in connection with an entirely different embodiment, i.e., the
“inhibitor/surfactant embodiment,” than the embodiment relied upon in rejecting
independent claim 1, i.e., the “heterocyclic/adhesive” embodiment.
The rejection is affirmed as to claim 4 and reversed as to claim 5.
Claim 19
Appellants argue that claim 19 is not anticipated because “[t]he Whitney patent is
entirely silent on a method of reducing tarnish of a subsequently deposited immersion
silver layer.” We are in agreement with the examiner that this argument is unpersuasive.
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