Appeal No. 1996-3535
Application No. 08/236,006
which would not enable one with ordinary skill in the art to
practice the here claimed invention.
Claims 20, 21, 23 through 27, 44, 45, 47 through 51, 58
and 61 are rejected under 35 U.S.C. § 103 as being
unpatentable over Metzger in view of Kurosaki.
Neither of these rejections can be sustained.
Concerning the section 112, first paragraph, rejection,
the examiner argues that the appellants’ disclosure is
enabling only for electroless metallizing bath compositions
comprising the specific particulate matter materials, the
specific particulate matter stabilizers and the specific
concentrations for these materials and stabilizers set forth
in Table 1 of the subject specification. According to the
examiner, this is because “[t]here is insufficient teaching as
to what criteria might be used to suggest an appropriate
particulate matter stabilizers-particulate matter pairs”
(answer, page 9) and correspondingly because “one skilled in
the art would have to perform undue experimentation to
determine operative compositions within the bounds of the
instant claims and practice the invention as it is now set
forth” (answer, page 10). We cannot agree.
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