Appeal No. 96-1313
Application 08/202,536
claims are unpatentable. Furthermore, amendments to claims
made during prosecution of the patent before the PTO are a
factor to be considered in determining possible infringement
of such a claim under the doctrine of equivalents. Again,
appellants should not have to guess why the PTO has determined
a given claim in an application to be unpatentable under 35
U.S.C. § 103. 35 U.S.C.
§ 132.
In my view, the majority should (1) explicitly decide the
correctness of the examiner's position on the obviousness of
immersing substrates in the bath of Morgan and (2) explain why
claims 11-18 and 25-27 are unpatentable under their new ground
of rejection.
Substance
1. The Examiner's Position
I would reverse the rejection made by the examiner in the
Examiner's Answer. Morgan describes a viscous aqueous
electroless plating solution to be coated on substrates. See,
-22-22
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