Appeal No. 2006-1079 Application No. 10/139,085 Claim 22 is directed to a method of manufacturing a printed wiring board by contacting a substrate having exposed copper pads, through holes, and soldermask with a pretreatment composition followed by an immersion silver plating bath. The examiner relies on Whitney for a teaching of using a silver immersion plating bath to make a printed wiring board having exposed copper pads and through holes. The examiner notes that Whitney does not explicitly disclose the use of a solder mask, but maintains that it would have been obvious to do so given Soutar’s disclosure of a conventional printed wiring board configuration (i.e., one with a soldermask). Soutar discloses a method of forming a silver coating on a surface of a metal which is less electropositive than silver wherein the metal surface is contacted with an aqueous displacement plating composition comprising silver. Soutar does not employ a pretreatment step. Appellants maintain that “one skilled in the art reading the Soutar patent would be lead away from the need for improving the adhesion of an immersion deposited layer of silver” because the method is already said to provide good adhesion. Col. 5, ll. 13-16. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.Cir.1994). We are in agreement with the examiner that this argument does not address the rejection. As pointed out by the examiner, the primary reference relied upon is Whitney and Soutar is merely cited to demonstrate a conventional printed wiring board configuration (i.e., one with a soldermask). Appellants have not shown that one of ordinary skill in the art would 9Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007