Appeal No. 96-1313
Application 08/202,536
by immersing the substrate. Morgan itself is directed to6
processes which involve coating, not immersing, substrates in
the electroless bath solution. It is unclear from this record
that merely immersing a substrate in the viscous bath of
Morgan would reasonably produce a satisfactory result. As
explained in Morgan, there are issues of bath stability
(release of hydrogen) and the ability to place the bath in an
appropriate area of the substrate which must be addressed.
Absent a more fact-based explanation by the examiner why it
would have been obvious to one of ordinary skill in the art to
immerse a substrate in the viscous electroless plating
solution of Morgan, I do not find that the examiner has
satisfied his initial burden of providing reasons of
unpatentability. In re Oetiker, 977 F.2d 1443, 1446, 24
USPQ2d 1443, 1445 (Fed. Cir. 1992). Accordingly, I vote to
reverse the examiner's rejection.
2. New Ground of Rejection
6As a matter of logic, one would think that a rejection
of claim 10 would be premised upon a reference directed to
immersing substrates in an electroless plating bath. The fact
that the examiner apparently failed to uncover references from
the “immersion” art area which teach or suggest a bath having
the ingredients required by claim 10 on appeal is applicable
by immersion of the substrate may be telling.
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