Appeal No. 96-1313
Application 08/202,536
claim 10 on appeal and that described in Morgan is that claim
10 requires a step of immersing a substrate in the recited
electroless metal plating bath while the electroless metal
plating bath of Morgan has been designed so that it is to be
coated on the substrate.
The reason given by the examiner why this aspect of claim
10 on appeal would have been obvious to one of ordinary skill
in the art appears in the paragraph bridging pages 4-5 of the
Examiner's Answer as follows:
[Morgan] also differs from the claimed invention
by not applying the electroless plating solution to
the substrate by immersion. However, the second
paragraph of column 2 makes it clear that Morgan was
well aware of applying electroless plating
composition by immersion (which is the most common
method) but designed his procedure to work on large
or fixed substrates which could not be immersed. In
the event that it was desired to plate a substrate
which could be immersed with Morgan's composition it
is the Examiner's position that a person having
ordinary skill in the art at the time of the claimed
invention would have found it obvious to immerse
same in Morgan's electroless plating bath because
immersion is the most common method for applying an
electroless bath and thus an expected result would
be anticipated.
The second paragraph of column 2 of Morgan which the
examiner relies upon in support of this portion of his
rejection reads as follows:
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