Appeal No. 96-1313
Application 08/202,536
As explained on pages 5-6 of their opinion, the majority
believes that it would have been "readily apparent to one of
ordinary skill in the art . . . that if the thickener were
omitted from Morgan’s solution, the solution still would be
suitable for use in applications where running of the solution
is not a problem, i.e, when the substrates are small enough to
be immersed in the solution and are movable such that
immersion in the solution is possible." The majority does not
cite any facts in support of this conclusion but, rather,
hinges that conclusion solely on the basis of the three cases
cited at page 6 of their opinion.
As set forth in In re Cofer, 354 F.2d 664, 667, 148 USPQ
268, 271 (CCPA 1966) "Necessarily it is facts appearing in the
record, rather than prior decisions in and of themselves,
which must support the legal conclusion of obviousness under
35 USC 103." Here, the majority only expresses its opinion
that one of ordinary skill in the art would have found it
obvious to immerse a small substrate in this electroless
plating solution of Morgan. However, as explained above,
Morgan indicates that the stability of the electroless plating
solution as well as the ability to place and maintain the
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