Appeal No. 1999-0544 Page 4
Application No. 08/324,842
In rejecting claim 1, the Examiner acknowledges that Honjo fails to explicitly teach the
claimed heating step (Answer at 4) and then makes a finding that Honjo “does teach heat-treating
a metal coated ceramic substrate so as to make a stable metallic layer on the substrate.” (Id.).
The Examiner goes on to conclude that “Honjo et al. (4,510,179) fairly suggest to one skilled in
the art that drying/heating a coating is advantageous thereby producing a stable coating.” (Id.).
We cannot agree that Honjo provides sufficient evidence of obviousness with regard to
the heating step. While Honjo describes a step of heating a metal coated substrate, “the metal” is
formed from a paste and the heating takes place before plating (Honjo at col. 2, ll. 27-34). Honjo
does not perform a step of heating within the claimed temperature range after electrolessly
plating as required by claim 1.
It is the Examiner’s position that Honjo fairly suggests to one skilled in the art that
drying/heating a coating is advantageous thereby producing a stable coating. However, the
suggestion in Honjo is to heat a paste to form a silver coating. (Id. at col. 2, ll. 35-39). Honjo
teaches that heating a paste is advantageous to produce a stable coating from the paste but does
not provide a basis to conclude that heating an electrolessly plated coating is advantageous.
Electroless plating proceeds by a different mechanism than coating by heating a paste. No other
evidence is relied upon to show the particular heating step claimed. The Examiner provides an
insufficient basis upon which to conclude that those of ordinary skill in the art would have heated
the surface of the substrate to about 180 °C to about 350 °C for a time sufficient for the
electrolessly plated metal on its surface to adhere to the substrate.
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