Ex Parte ARRINGTON et al - Page 3


               Appeal No. 2000-1005                                                                                                   
               Application 08/813,765                                                                                                 

                       In comparing the process steps required in appealed claims 5 and 13 with the prior art as                      
               applied by the examiner, we must agree with appellants that the combination of references would                        
               not result in the claimed process encompassed by these claims and that one of ordinary skill in                        
               this art would not have combined the teachings of these references.  Appellants point out that                         
               Babu does not address the matter of the “seeped circuit material,” that is, the “residual circuit                      
               materials,” and the “plasma discharge to facilitate removal of the [catalyst] seed particles” does                     
               not completely remove the remaining circuit material (specification, page 2, lines 10-16; see                          
               brief, page 5).  See Babu, col. 1, l. 51, to col. 2, l. 12.  Thus, contrary to the difference with                     
               respect to Babu noted by the examiner (answer, page 3), it is not “oxidizing the seed particles”                       
               that is at issue, but the oxidizing of the remaining circuit material.  Therefore, while Karas                         
               teaches the removal of the “residual precious metal catalyst” without “degrading the plated                            
               [circuit] metal” (e.g., col. 3, ll. 44-47 and 65-67, col. 4, ll. 3-6) as recognized by the examiner                    
               (answer, page 3), such teachings even if applied to the process of Babu DOES not result in either                      
               the required pretreatment step or the required step of oxidizing the remaining circuit materials.                      
               The teaching of the “deactivation step” in Ott relied on by the examiner (answer, page 4) even if                      
               correctly applied to appealed claims 5 and 13, which it is not (brief, page 6, first sentence), does                   
               not cure this matter because the reference clearly teaches that the “deactivation step is performed                    
               after generation of the pattern of conductive traces and before The step of chemical deposition”                       
               (col. 2, ll. 64-66).                                                                                                   















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