Ex Parte Rzeznik et al - Page 9


                   Appeal No. 2006-1079                                                                                           
                   Application No. 10/139,085                                                                                     

                          Claim 22 is directed to a method of manufacturing a printed wiring board by                             
                   contacting a substrate having exposed copper pads, through holes, and soldermask with a                        
                   pretreatment composition followed by an immersion silver plating bath.                                         
                          The examiner relies on Whitney for a teaching of using a silver immersion plating                       
                   bath to make a printed wiring board having exposed copper pads and through holes.  The                         
                   examiner notes that Whitney does not explicitly disclose the use of a solder mask, but                         
                   maintains that it would have been obvious to do so given Soutar’s disclosure of a                              
                   conventional printed wiring board configuration (i.e., one with a soldermask).                                 
                          Soutar discloses a method of forming a silver coating on a surface of a metal                           
                   which is less electropositive than silver wherein the metal surface is contacted with an                       
                   aqueous displacement plating composition comprising silver.  Soutar does not employ a                          
                   pretreatment step.                                                                                             
                          Appellants maintain that “one skilled in the art reading the Soutar patent would be                     
                   lead away from the need for improving the adhesion of an immersion deposited layer of                          
                   silver” because the method is already said to provide good adhesion.  Col. 5, ll. 13-16.                       
                   "A reference may be said to teach away when a person of ordinary skill, upon reading the                       
                   reference, would be discouraged from following the path set out in the reference, or                           
                   would be led in a direction divergent from the path that was taken by the applicant."                          
                   In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.Cir.1994).  We are in                                
                   agreement with the examiner that this argument does not address the rejection.  As                             
                   pointed out by the examiner, the primary reference relied upon is Whitney and  Soutar is                       
                   merely cited to demonstrate a conventional printed wiring board configuration (i.e., one                       
                   with a soldermask).  Appellants have not shown that one of ordinary skill in the art would                     

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