Ex Parte RUSSELL et al - Page 7




          Appeal No. 2001-2255                                                        
          Application 09/027,856                                                      


          a solder mask.  Appellants additionally argue that there is                 
          nothing to indicate to the artisan that the solder mask                     
          composition of Day would make a suitable substitution for the               
          unidentified resist of Burr [brief, pages 4-9].                             
               The examiner responds that the mask of Day is used for the             
          same purpose as the mask in Burr.  The examiner also notes that             
          the solder mask of Day is appropriate for use as an electroless             
          plating mask because appellants have admitted this fact in their            
          disclosure.  The examiner asserts that the artisan would have               
          known to select any suitable and known mask for use in Burr.                
          Finally, the examiner responds that appellants have stated no               
          reasons why the artisan would think that the resin mask of Day              
          would not be suitable for use as an electroless plating mask                
          [answer, pages 4-7].                                                        
               Appellants respond that there is nothing in any reference              
          cited by the examiner that would indicate that the material of              
          Day would have the properties required for a plating resist.                
          Appellants also respond that there is nothing in the cited                  
          references which would indicate to the artisan that he could                
          anticipate the results obtained with a high degree of                       
          probability.  Appellants also note that the examiner’s position             
          that the Day composition works as a resist mask is a fact not               

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