Appeal 2006-3193
Application 10/772,595
as “metallic impurities” or “metallic contaminant” and not as a platable
metal ion (Reply 5).
The Examiner contends that JP ‘693’s disclosure of a nickel alloy
electroplating bath consisting of a nickel salt and a salt of one or more
elements selected from boron, cobalt, copper, iron, manganese, phosphorus,
tin, and zinc would have suggested a quaternary Ni-Co alloy (Answer 17).
The Examiner further contends that the overall solution in Passal Example 8
would have contained ionic nickel, ionic cobalt, ionic boron, and ionic zinc
which would have formed a quaternary Ni-Co alloy (Answer 18).
Based on the contentions of the Examiner and the Appellants, the
issue before us is: Do JP ‘693 and Passal inherently disclose quaternary Ni-
Co alloys?
For the reasons discussed below, we answer this question in the
affirmative.
Issue II:
Appellants contend that one of ordinary skill in the art would not have
been motivated to replace the quaternary ammonium salt of JP ‘693 with the
acetylenic compound of Passal (Br. 5). According to Appellants, there is no
teaching or suggestion in Passal indicating that acetylenic brighteners would
be effective in improving the appearance of quaternary Ni-Co alloys (Br. 8).
Appellants contend that Passal actually teaches that the addition of
acetylenic compounds to a Ni-Zn alloy is not effective in improving the
appearance of the Ni-Zn alloy (Br. 7). Appellants further contend that one
of ordinary skill in the art would not have been motivated to substitute the
quaternary ammonium salt brightener of JP ‘693 with the acetylenic
brightener of Passal because such substitution would have a negative impact
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