Appeal No. 2003-0636
Application No. 09/599,125
with appellants that the examiner's § 102 rejection is not well-
founded. However, we agree with the examiner that the claimed
subject matter of claims 5, 6, 8, 14, 15 and 26-31 would have
been obvious to one of ordinary skill in the art in view of the
applied prior art. Accordingly, with the exception of the
rejection over Mallory in view of Lopatin, we will sustain the
examiner's § 103 rejections.
We consider first the examiner's rejection under § 102 over
Lopatin. The examiner appreciates that "Lopatin does not
specifically teach cleaning with a cleaning solution comprising
an electroless plating solution" (page 4 of Answer, first
paragraph). The examiner reasons, however, that since "Lopatin
performs the same planarizing and electroless plating solution
application, as claimed by the appellant, it would have been
expected that it would have also inherently had the claimed
cleaning properties" (id.).
The flaw in the examiner's reasoning is that he has failed
to set forth reasoning to support the inevitability of the
inherency which he propounds. It is not enough that Lopatin may
possibly or probably clean the substrate during electroless
plating, it is necessary that the examiner establish that the
Lopatin process necessarily results in cleaning during the
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007