Appeal No. 1996-3534
Application 08/323,410
Ipri. Appellants admit that their invention is an improvement in the processes of selective metal
deposition by formation of a seed layer by an energy source, such as a laser, and in the products
thereof taught in Bernhardt in that it addresses the problem of shorting between the conductor lines that
can occur in practicing the Bernhardt process when there is “insufficient insulation material to insulate
the metal layer underneath the perimeter region of the conductors from subsequent electroplating”
(specification, page 2, lines 5-10; see also principal brief, page 9, first paragraph). Based on the
record before us, we find that one of ordinary skill in this art would have recognized this problem in the
routine practice of the Bernhardt process in preparing integrated circuit components (e.g., col. 3, lines
31-43) and thus would have been motivated to solve it. See In re Nomiya, 509 F.2d 566, 574, 184
USPQ 607, 613 (CCPA 1975) (“The significance of evidence that a problem was known in the prior
art is, of course, that knowledge of a problem provides a reason or motivation for workers in the art to
apply their skill to its solution.”); In re Ludwig, 353 F.2d 241, 243, 147 USPQ 420, 421 (CCPA
1965); In re Goodman, 339 F.2d 228, 232-33, 144 USPQ 30, 33-34 (CCPA 1964).
Accordingly, one of ordinary skill in the art of preparing integrated circuit components would
have looked to this art area and analogous art areas for a solution to the problem of depositing metals in
such manner as to prevent the deposited metal forming the conductor from contacting other metal
layers. We find that one of ordinary skill in this art would have recognized that the same problem of
maintaining a separation between a deposited metal and other metal layers was addressed in Ipri
wherein different metal layers are deposited in the formation of solid state switching and conductor
crossover structures for liquid crystal displays (col. 3, lines 51- 58; see also, e.g., col. 1, and col. 2, line
44, to col. 3, line 23). The solution to the problem taught by Ipri is the formation of “[d]ielectric
stringers 33” which provide removable insulation between the layers (col. 3, line 59, to col. 4, line 5).
We note that appellants admit that the “[Ipri] uses ‘stringers (insulating fillets) as claimed” (principal
brief, page 8). Indeed, we find that Ipri constitutes analogous prior art because it is from the same filed
of endeavor as Bernhardt and the claimed invention, that is, the formation of circuitry by metal
deposition, and is further directed to the same problem of maintaining a separation between a deposited
metal and other metal layers with which the claimed invention is involved. In re Clay, 966 F.2d 656,
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