Appeal No. 96-1313
Application 08/202,536
applying an electroless plating composition by immersion, but
developed a procedure which is effective on large or fixed
substrates (answer, pages 4-5). In the event that it was
desired to plate a substrate which could be immersed in a
bath, the examiner argues, it would have been obvious to one
of ordinary skill in the art to immerse the substrate in
Morgan’s electroless plating bath (answer, page 5).
Morgan’s disclosure encompasses not only what it
expressly discloses, but also what it would have fairly
suggested to one of ordinary skill in the art. See In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
Morgan teaches that he increases the viscosity of his solution
by use of a thickener to prevent the solution from running
when it is applied to only a restricted area of a substrate or
is applied to substrates which are too large to be immersed in
the solution or are fixed in place such that immersion in the
solution is prohibited (col. 2, lines 5-17). It would have
been readily apparent to one of ordinary skill in the art,
given this teaching, that if the thickener were omitted from
Morgan’s solution, the solution still would be suitable for
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