Ex Parte RUSSELL et al - Page 6




          Appeal No. 2001-2255                                                        
          Application 09/027,856                                                      


          actually made by appellants have been considered in this                    
          decision.  Arguments which appellants could have made but chose             
          not to make in the brief have not been considered and are deemed            
          to be waived by appellants [see 37 CFR § 1.192(a)].                         
               With respect to representative claim 12, the examiner finds            
          that Burr teaches the claimed invention except for the                      
          composition of the resist and the electrical components disposed            
          atop the permanent plating resist.  The examiner finds that it              
          would have been obvious to the artisan to place an electrical               
          component on the resist and connect it to the metal in the                  
          apertures because it was well known in the art.  The examiner               
          cites Day as teaching the composition of the claimed resist.  The           
          examiner finds that it would have been obvious to the artisan to            
          use the Day composition as the resist layer of Burr because it is           
          obvious to use known materials based on their suitability                   
          [answer, page 3].                                                           
               Appellants argue, inter alia, that the composition disclosed           
          by Day is taught for use as a solder mask, and there is no                  
          suggestion that the composition is suitable as a resist for                 
          electroless plating.  Appellants assert that there is no                    
          indication in Day that the solder mask is capable of having                 
          circuitry or components formed thereon after it has been used as            

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