Appeal No. 1998-0754
Application No. 08/652,253
glass or metal, by contacting the workpiece with a conventional sensitizer, such as PdCl -SnCl -HCl.
2 2
The examiner further cites Halliwell as describing the evaporation of the sensitizer from the desired
areas of the workpiece surface by laser beam energy and subsequently electrolessly depositing a metal
onto the areas of the workpiece where the sensitizer remains. (See Examiner’s Answer, pages 4-5).
The examiner, however, recognizes that Halliwell does not specifically recite appellants’ aqueous Sn
free Pd sol which is stabilized with a water-soluble polymer. The examiner relies upon De Bakker as
teaching the utility of using polymer stabilized Pd compositions which are free of Sn for sensitizing
substrates prior to electroless deposition. (Examiner’s Answer, page 5). The examiner concludes that
it would have been obvious to a person skilled in the art to employ De Bakker’s polymer modified
sensitizing solution in Halliwell’s process because Halliwell’s teaching that any known conventional
sensitizer may be used.
It is well settled that "a prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In
re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). Any motivation to modify
the prior art references must flow from some teaching in the art that suggests the desirability or incentive
to make the modification needed to arrive at the claimed invention. In re Napier, 55 F.3d 610, 613,
34 USPQ2d 1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885,
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