Appeal No. 1998-0754
Application No. 08/652,253
1888, (Fed. Cir. 1991). (“When it is necessary to select elements of various teachings in order to form
the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to
make the selection made by the applicant. [Citations omitted] . . . The extent to which such suggestion
must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case in
the light of the prior art and its relationship to the applicants’ invention.”).
As to claims 5-9 and 20-23, we conclude that the examiner has established a prima facie case
of obviousness with respect to the claimed pretreatment of electrically insulating substrates with an
aqueous Sn free Pd sol which is stabilized with a water-soluble polymer. In particular, Halliwell
teaches: 1) a laser induced electroless plating process where a substrate is pretreated with a sensitizer;
2) exposing the sensitized substrate to a laser light source to selectively remove portions of the sensitizer
from the substrate; and 3) electrolessly plating the laser treated surface with a metal in those substrate
areas still possessing the sensitizer. Moreover, Halliwell specifically states that the sensitizer “is a
conventional one, such as PdCl -SnCl -HCl solution, or the like.” (Col. 2, lines 8-9). Accordingly,
2 2
Halliwell instructs one skilled in the art to employ conventional sensitizers.
That Halliwell instructs one skilled in the art to use sensitizers other than PdCl -SnCl -HCl is
2 2
further confirmed by Halliwell’s claims. Under the doctrine of claim differentiation, “which is ultimately
based on the common sense notion that different words or phrases used in separate claims are
presumed to indicate that the claims have different meanings and scope, [citation omitted], normally
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