Appeal No. 2003-0454 Page 9
Application No. 09/644,734
unpatentable over Miyashita in view of Hsu. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the rejections.
Claims 38 to 44
In the rejection of claims 38 to 44 under 35 U.S.C. § 103 as being unpatentable
over Miyashita in view of Hsu (answer, p. 4), the examiner did not ascertain the
differences between Miyashita and claims 38 to 444 and did not determine that anything
claimed in claims 38 to 44 would have been obvious at the time the invention was made
to a person of ordinary skill in the art.5 The examiner did state that "[i]t is well-known in
the art to commence dressing when the rate or quality of polishing has dropped below
accetable [sic, acceptable] levels." However, the examiner did not rely on this well-
known teaching to modify Miyashita in any way.
Based on our analysis and review of Miyashita and claim 38, it is our opinion that
a difference is the limitation that "after said polishing rate reaches said predefined
4 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
5 In the rejection under 35 U.S.C. § 103, the examiner did state that Miyashita does not disclose
the second conditioning surface having an area larger than the substrate and that such would have been
obvious at the time the invention was made to a person of ordinary skill in the art from the teachings of
Hsu. However, that limitation is not present in claims 38 to 44.
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