Appeal 2007-1209
Application 10/763,979
the Examiner, the reference expressly teaches that the "best" pH is in the
range of 5-8, and that the complexing agent/metal ion ratio is preferably
within ranges that include 4/1. Accordingly, based upon preferences clearly
stated in the reference, we are convinced that it would have been obvious for
one of ordinary skill in the art to employ an electroplating solution having a
pH of 5 and a complexing agent/metal ion ratio of 4/1, which values fall
directly within the claimed ranges. Hence, it can not be gainsaid that JP '588
teaches a preference for electroplating solutions that are encompassed by the
claimed subject matter. It has been held that the prior art disclosure of a
value that falls directly within a claimed range anticipates the claimed range
under § 102, and it is well settled that prior art ranges which overlap claimed
ranges establish the prima facie obviousness of the claimed ranges.
Appellant stresses that "JP '588 does not address the agglomeration
problem during plating" (Br. 5, first para.), and that operating within the
claimed ranges also minimizes "attack of the non-elecotroplatable portions
of composite substrates during electroplating" (Br. 9, last para.). However,
as noted by the Examiner, it is well settled that the prior art need not disclose
the same purpose or benefits of a claimed method in order to establish its
obviousness under 35 U.S.C. § 103. In re Dillon, 919 F.2d 688, 693,
16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert. denied, 500 U.S.
904 (1991). In the present case, JP '588 provides ample motivation for
utilizing electroplating methods that are embraced by the appealed claims,
namely, to achieve a good plating deposit while not attacking parts of the
substrate made of ceramic, lead glass, and vacuum deposited aluminum
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