Ex Parte Ferrier - Page 3


              Appeal No. 2006-2387                                                               Page 3                
              Application No. 10/304,514                                                                               

              (e.g., a benzotriazole; specification, page 9, line 23); and an unsaturated alkyl                        
              substituted with aromatic or non-aromatic cyclic groups (e.g., cinnamic acid;                            
              specification, page 11, line 17).                                                                        
                     Claim 9 also recites several components that are “optionally, but preferably,”                    
              included in the claimed composition.  Since they are optional, none of these                             
              components are required in the claimed composition.                                                      
              2.  Obviousness                                                                                          
                     The examiner rejected claims 1-26 under 35 U.S.C. § 103 as obvious in view of                     
              Ferrier1 and Arimura.2  The examiner relied on Ferrier for its disclosure of a composition               
              comprising “an oxidizer preferably hydrogen peroxide . . . , an inorganic acid such as                   
              sulfuric acid . . . , [and] a corrosion inhibitor preferably benzotriazole.”  Examiner’s                 
              Answer, page 3.  The examiner acknowledged that “Ferrier does not explicitly teach the                   
              claimed unsaturated alkyl substituted with aromatic or non-aromatic cyclic groups.”  Id.                 
                     For this limitation, the examiner relied on Arimura:                                              
                     Arimura teaches a process for increasing the adhesion of a polymeric                              
                     material to a metal surface (abstract) by applying a[n] adhesion promoting                        
                     composition comprising organic acids such as cinnamic acid in order to                            
                     provide pH adjustment and dissolution of copper produced by oxidation                             
                     with cupric complex of an azole compound (col. 2 lines 52-64).                                    
              Id.  The examiner concluded that it would have been obvious to “incorporate[ ] the                       
              cinnamic acid of Arimura into the adhesion promoting composition of Ferrier in order to                  
              better adjust the pH of the composition and better dissolve copper produced by oxidation                 
              with cupric complex of an azole compound as taught by Arimura.”  Id., pages 3-4.                         

                                                                                                                       
              1 Ferrier, U.S. Patent 6,146,701, issued Nov. 14, 2000                                                   
              2 Arimura et al., U.S. Patent 5,532,094, issued July 2, 1996                                             





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