Ex Parte ISHIKAWA et al - Page 5



          Appeal No. 2004-1357                                                        
          Application 09/587,281                                                      

          protecting tape when cut covers the level surface and extends               
          over a small portion of the chamfered peripheral edge.  Also of             
          interest is Nishida’s discussion of breakage suffered by wafers             
          ground by the conventional method versus those ground by                    
          Nishida’s inventive method:                                                 

               [0032] In the cases where the rear surface grinding of                 
               wafers with an original thickness of 630 :m was                        
               performed so that the thickness after the rear surface                 
               grinding was 400 :m, the number of wafers with                         
               breakings is shown below.  . . .                                       
               [0033] In the case where the rear surface grinding was                 
               performed according to the conventional method, the number             
               of wafers with breakings with a size of 300 :m or more was             
               one, the number of wafers with breakings with a size of 100            
               :m to 300 :m was four, and the number of wafers with                   
               breakings with a size of 100 :m or less was 125.                       
               [0034] In the case where wafers of the same number were                
               ground according to the present embodiment, the number                 
               of wafers with breakings with a size of 100 :m or less                 
               was 89 and there were no wafers with breakings with a                  
               size of 100 :m or more [translation, page 7].                          

               Anticipation is established only when a single prior art               
          reference discloses, expressly or under principles of inherency,            
          each and every element of a claimed invention.  RCA Corp. v.                
          Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ              
          385, 388 (Fed. Cir. 1984).  It is not necessary that the                    
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