Appeal No. 2006-1079
Application No. 10/139,085
Discussion
Claims 1-6, 8, 10, 11, 19 and 21 stand rejected under 35 U.S.C. § 102(e)1 as
anticipated by Whitney. Anticipation under 35 U.S.C. § 102(e) requires that "each and
every element as set forth in the claim is found, either expressly or inherently described,
in a single prior art reference." In re Robertson 169 F.3d 743, 49 USPQ2d 1949 (Fed.
Cir. 1999).
Whitney discloses a process for treating a metal substrate to improve adhesion of
polymeric materials thereto. Whitney’s process includes an intergranular etching step for
which Whitney discloses several embodiments. The examiner relies on the intergranular
etching composition used in Whitney’s “heterocyclic/adhesive” embodiment. The
examiner found that Whitney
teaches making a coated substrate, such as a printed circuit board (col. 4,
lines 33-45,. col. 33, lines 1-52), by pretreating a metal (copper) with a
microetching solution (col. 9, lines1-32) and immersion plating the treated
metal with another metal, such as silver (col. 21, line 51-col. 22, line 32),
wherein the microetching solution comprises an imidazole compound, a
polyhydric compound, such as a thio-containing compound, (col. 11, line
l-col. 12, line 42) and water (col. 42, lines 40-62), and the immersion
1 35 U.S.C. § 102(e) provides that “[a] person shall be entitled to a patent unless . . . the
invention was described in . . . a patent granted on an application for patent by another
filed in the United States before the invention by the applicant for patent. 35 U.S.C.
§ 102(e) (2000). Under a 1999 amendment to 35 U.S.C. § 103(c), subject matter which
qualifies as prior art only under § 102(e) cannot preclude patentability under § 103 where
the subject matter and the claimed invention were, at the time the invention was made,
owned by the same person or subject to an obligation of assignment to the same person.
The amendment to § 103(c) does not apply to this appeal since it only affects patents
issuing from applications filed on or after the November 29, 1999 effective date. See
American Inventors Protection Act, Pub.L. 106-113, 113 Stat. 1536, 1501A-591 (1999).
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