Ex Parte EVANS et al - Page 3




                Appeal No. 1999-0544                                                                                 Page 3                   
                Application No. 08/324,842                                                                                                    


                         All the claims stand rejected under 35 U.S.C. § 103 as follows:                                                      
                1.  To reject claims 1-2, the Examiner relies on Honjo in view of Portner as evidence of                                      
                obviousness.                                                                                                                  
                2.  To reject claims 5, 6, and 10-12, the Examiner relies on Honjo in view of Portner and                                     
                Dickirson as evidence of obviousness.                                                                                         
                3.  To reject claims 3 and 4, the Examiner relies on Honjo in view of Portner and Keyes as                                    
                evidence of obviousness                                                                                                       
                4.  To reject claims 7-9 and 13-21, the Examiner relies on Honjo in view of Portner and Akoh as                               
                evidence of obviousness.                                                                                                      
                We reverse all the rejections for the following reasons.                                                                      


                                                                 OPINION                                                                      
                         Of the appealed claims, two are independent claims, claims 1 and 13.  We begin our                                   
                discussion with claim 1.  Claim 1 requires heating the surface of the substrate in a specific                                 
                temperature range for a time sufficient for “the metal” to adhere to the substrate.  The metal                                
                referenced by the claim is the metal formed on the surface by electroless plating.  To adhere to                              
                the substrate, the electrolessly plated metal must be present on the substrate.  We conclude that                             
                the claim requires, as argued by Appellants (Brief at 4), that the substrate be heated after the                              
                layer of metal is electrolessly plated thereon.                                                                               









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