Appeal No. 2006-1079
Application No. 10/139,085
of forming a printed circuit board which includes etching exposed copper pads with a
microetching composition to improve adhesion of subsequent metal plating. Examiner’s
Answer, page 5. Appellants argue that one of ordinary skill in the art would not have
combined the teachings of Krulik and Whitney because Krulik is directed to activation of
copper for electroless nickel plating and neither teaches nor suggests immersion silver
plating.
To support a rejection on obviousness grounds, the examiner must provide a
detailed analysis of the prior art and reasons why one of ordinary skill in the art would
have possessed the knowledge and motivation to make the claimed invention. See In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). In this case, the
examiner reasons that one of ordinary skill in the art would have considered Krulik’s
electroless plating method relevant to Whitney’s immersion plating method because the
means by which etching improves plating is by providing a roughened surface which
provides greater surface area and nooks and crannies for better adhesion of the applied
coating. In our view, however, the examiner’s reasoning is not sufficient to establish a
prima facie case of obviousness because the examiner has not explained why one of
ordinary skill in the art would have been motivated to use Krulik’s etching step with a
silver plating process since Krulik’s disclosure is limited to improving electroless nickel
plating.
The rejection is reversed.
Claim 22 stands rejected under 35 U.S.C. § 103 as unpatentable over Whitney as
applied to claim 1 and further in view of Soutar.
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