Appeal No. 1998-0754
Application No. 08/652,253
Halliwell and De Bakker that provide the motivation to use the claimed sensitizer as a Pd activating
layer which is patterned by laser light pulses. Furthermore, it is the teachings of Halliwell that are relied
upon as describing the use of laser light pulses to pattern a sensitized activating layer in a selective
metallization process. In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to those of ordinary skill in the
art.”).
Appellants also contend that the teachings of Halliwell and De Bakker are so divergent that a
person of ordinary skill in the art would have no reason to combine their teachings. Both Halliwell and
De Bakker are directed to activation of a surface such that the surface may be plated with a metal in an
electroless process. That Halliwell further describes the ability to selectively activate portions of a
treated surface fails to provide a basis for suggesting that Halliwell and De Bakker are divergent in their
“teachings.”
Conclusion
The decision of the examiner to reject claims 5-9 and 20-23 under 35 U.S.C. § 103(a) as
unpatentable over Halliwell in view of De Bakker is Affirmed. The rejection of claims 2-4 and 12-18
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