Appeal 2006-3193
Application 10/772,595
Appellants advance essentially the same substantive arguments with
respect to rejections 1, 3, and 5. Appellants do not present separate
arguments as to any particular claim, but argue that all of the claims are
patentable for the same reasons discussed with respect to claim 1 (Br. 12
and 13). Accordingly, we decide these grounds of rejection on the basis of
independent claims 1, 9, and 18, respectively. With respect to rejections 2
and 4, we note that Appellants fail to advance any substantive arguments
beyond those presented in connection with the rejections of claims 1 and 9,
from which claims 7 and 13 depend, respectively. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). Accordingly, the issues raised in this Appeal pertain to all five
grounds of rejection.
ISSUES
Issue I:
Appellants contend that JP ‘693 and Passal do not “mention any
quaternary alloy including a quaternary Ni-Co alloy” (Reply 2 & 4).
Appellants maintain that JP ‘693 and Passal only contain specific disclosures
of binary Ni-Co alloys (Reply 3 & 4). Appellants concede that both JP ‘693
and Passal disclose Ni-Co electroplating baths containing boric acid, but
maintain that the boric acid “does not provide a significant portion of
platable boron” (Reply 2 & 4). Appellants further concede that Passal
discloses the addition of zinc to an electroplating bath containing Ni, Co,
and boric acid (Reply 8). However, Appellants argue that the zinc is added
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