Appeal No. 2006-1079
Application No. 10/139,085
Whitney teaches the use of the claimed process with similar concentrations of the
components. Therefore, the burden is on appellants to demonstrate that Whitney’s silver
layer would not inherently experience the claimed reduction in tarnish. See In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990)(“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.”); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433 (CCPA 1977).
The rejection is affirmed.
Claim 21
As pointed out by the examiner, claim 21 does not limit the chelating agent to a
polyamine. Accordingly, claim 21 is anticipated for the same reasons set forth with
respect to claim 1.
The rejection is affirmed.
Claims 14, 16 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over
Whitney as applied to claim 1 and further in view of Krulik.
Claim 14 is directed to a method of manufacturing a printed wiring board wherein
a metal that is less electropositive than silver is first treated with an etchant composition
and then contacted with a pretreatment composition followed by contact with an
immersion silver plating bath. The examiner relies on Whitney for a teaching of the latter
two steps, i.e., a method of making a printed wiring board by pretreating copper with a
composition comprising one or more azole compounds, one or more chelating agents and
water, and then contacting the copper with an immersion silver plating bath. Examiner’s
Answer, p. 5. The examiner relies on Krulik for a teaching of the first step, i.e., a method
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