Ex parte BOECKER et al. - Page 3




                Appeal No. 95-3460                                                                                                            
                Application No. 08/042,303                                                                                                    


                         Absent from Sirinyan is any teaching of a sulfonic acid                                                              
                anionic surfactant as recited in claim 1.  Thus, Sirinyan cannot                                                              
                anticipate claims 1, 2, 4 to 6, 8, 14, 16 and 17, since Sirinyan                                                              
                does not meet every element of the claimed invention.  Hybritech                                                              
                Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379, 231                                                                 
                USPQ 81, 90 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).                                                              
                Moreover, as argued by appellants, Sirinyan requires a chemical                                                               
                reaction between the activator compound and the sulfonic acid                                                                 
                surfactant, whereas appellants' process does not.                                                                             
                         With respect to claim 3, we do not agree with the                                                                    
                examiner that one skilled in the art would have found it obvious                                                              
                to use n-alkylarylsulfonic acid, as recited in claim 3, in lieu                                                               
                of the organometallic compounds disclosed in Sirinyan.  The                                                                   
                examiner has the burden to show the equivalence of the                                                                        
                organometallic compound containing sulfonic acid groups  with                               2                                 
                n-alkylarylsulfonic acid in the electroless metallization process                                                             







                         2Sirinyan, column 2, lines 10 to 14 and 30 to 32, teaches                                                            
                the use of an organometallic compound of the group 8 of the                                                                   
                Period Systems of Elements with the organo portion selected from                                                              
                sulphonic acid groups, sulphonic acid halide groups and sulphonic                                                             
                acid ester groups.                                                                                                            
                                                                    -3-                                                                       




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