Appeal No. 1998-0754
Application No. 08/652,253
substrates other than glass. We conclude that De Bakker fails to motivate one skilled in the art to
activate a glass surface using the claimed Sn free Pd sol as De Bakker specifically teaches that glass
surfaces are not activated by the application of such a sensitizer. Appellants’ claims 5-9 and 20-23,
however, are not limited to such a glass substrate. Rather, appellants’ claims 5-9 and
20-23 stand or fall on claim 21 which recites an electrically insulating substrate. As Halliwell teaches
that suitable substrates include polymeric materials, such as polypropylene and polyethylene, and De
Bakker teaches that suitable surfaces to be activated include polymers, the prior art teachings motivate
one skilled in the art to conduct the claimed pretreatment of electrically insulating substrates. In re
Costello, 480 F.2d 894, 897, 178 USPQ 290, 292 (CCPA 1973). (“The argument that both the bath
and method claims cover the coating of metal and are therefore too broad in the sense of 35 U.S.C. §
103 cannot be accepted in toto. We agree that appellants' method claims, all of which are broadly
drawn to "applying a nickel coating to articles" (emphasis added), are not rendered unobvious by a
showing that plastic substrates may also be coated. Hence the method claims still read on obvious
subject matter.” See also In re Muchmore, 433 F.2d 824, 826, 167 USPQ 681, 683 (CCPA
1970)).
Appellants’ further argue that De Bakker fails to teach that the Pd activating layer provided on
the substrate may be patterned by laser light pulses to leave areas free of Pd and which are not
metallized by a subsequent electroless metallization process. Yet, it is the combined teachings of
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