Appeal No. 1996-3534
Application 08/323,410
659, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992).
Therefore, we find that the combined teachings of Bernhardt and Ipri would have prima facie
provided one of ordinary skill in this art with both the suggestion to use insulating fillets as taught by Ipri
to maintaining a separation between a metal deposited on a seed layer and other metal layers in the
process of preparing an integrated circuit component taught by Bernhardt and the reasonable
expectation of preventing shorting due to electroplating of metal adjacent the perimeter regions of the
seed layer. In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988);
In re O’Farrell, 853 F.2d 894, 902-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988); In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
In view of the prima facie case of obviousness established over the combined teachings of
Bernhardt and Ipri as we have applied them above, the burden of going forward has shifted to
appellants to submit argument and/or evidence in rebuttal. See generally In re Johnson, 747 F.2d
1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered appellants’ arguments insofar as they apply to the new ground of
rejection that we have entered above. In finding that Ipri is analogous prior art, we carefully considered
that this reference “is not concerned with preventing conductor shorting due to electroplating,” as
pointed out by appellants, (principal brief, page 8). We are also aware of the examiner’s statement that
in the “context” of claims 8 through 14 wherein “laser writing is used to form activated seed layers for
electroplating,” “an additional photolithographic step is not obvious because laser writing technology is
distinct from photolithographic technology as a method for making conductive patterns” (Office action
of March 2, 1995, Paper No. 3; pages 4-5). However, we find no evidence on this record that
either the method of application of metal to a substrate capable of receiving the same or the method of
forming a pattern for the deposition of the metal either establishes that Ipri is non-analogous art or
patentably distinguishes the claimed invention as a whole as encompassed by the appealed claims over
the combined teachings of Bernhardt and Ipri.
Accordingly, based on our consideration of the totality of the record before us, we have
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