Appeal No. 2001-2255
Application 09/027,856
suggested by Day, but is a fact which is only apparent based on
appellants’ own disclosure. Thus, appellants assert that there
is no evidence on this record that the material disclosed by Day
could be used as an electroless plating resist as claimed [reply
brief, pages 1-4].
We will not sustain the examiner’s rejection of claims 12-20
for essentially the reasons argued by appellants in the briefs.
Specifically, we agree with appellants that the artisan would
have no motivation to combine the teachings of Day with the
teachings of Burr except in an improper attempt to reconstruct
the claimed invention in hindsight. Burr offers absolutely no
guidance as to the composition of the resist material used.
Thus, there may be an unlimited number of materials that could be
used in Burr. The particular material recited in the claimed
invention as the permanent plating resist is shown to be a known
material by Day. The disclosure of Day, however, only discloses
this material being used as a solder mask, not as an electroless
plating resist. The only evidence on this record that the
particular composition disclosed by Day has an application as an
electroless plating resist comes from appellants’ own disclosure.
There is no evidence that the artisan, other than appellants
themselves, had knowledge that the material disclosed by Day
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