Appeal 2007-1209
Application 10/763,979
complexing agent/metal ion ratio. Also, any attempt to show that a method
described in the prior art is not stable should at least be accompanied by an
additional showing that one of ordinary skill in the art, making adaptations
within the skill of the art, could not have successfully carried out the prior
art method. In re Lamberti, 545 F.2d 747, 750, 751, 192 USPQ 278, 280,
281 (CCPA 1976); In re Weber, 405 F.2d 1403, 1407, 160 USPQ 549, 553
(CCPA 1969); In re Michalek, 162 F.2d 229, 231-32, 74 USPQ 107, 109
(CCPA 1947). No such evidence of reasonable adaptations is of record.
Furthermore, a pH of 5 that is said to produce a completely stable solution
is a pH value that is specifically taught as preferable by the reference.
Moreover, as noted above, this limited declaration evidence fails to establish
that the myriad of methods within the broad scope of the appealed claims are
unexpectedly superior to plating methods fairly taught by JP '588. We also
note that the technical paper referenced in paragraph 6 of the Declaration is
not part of the Declaration evidence.
In conclusion, it is our judgment that the evidence of obviousness
presented by the Examiner outweighs the evidence of nonobviousness
offered by Appellant. Accordingly, based on the foregoing and the reasons
set forth by the Examiner, the Examiner's decision rejecting the appealed
claims is affirmed.
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013