Ex Parte ISHIKAWA et al - Page 7



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

               Accordingly, we shall not sustain the standing 35 U.S.C.               
          § 102(b) rejection of claim 4 as being anticipated by Nishida.              

               We shall sustain, however, the standing 35 U.S.C. § 102(b)             
          rejection of claim 7 as being anticipated by Nishida.                       

               Claim 7 is somewhat similar in scope to claim 4.  It                   
          includes the limitations requiring the steps of cutting the                 
          protecting sheet so that a diameter of the protecting sheet is at           
          least equal to a diameter of the level part of the first face and           
          smaller than an outer diameter of the wafer, and removing the               
          protecting sheet from at least part of the chamfered inclined               
          surface.  Claim 7 does not include, however, the inclined angle             
          arranging step recited in claim 4.  In its place, claim 7 sets              
          forth a limitation requiring the step of “removing a portion of             
          the second surface of the wafer by grinding to a predetermined              
          finishing thickness of the wafer after the cutting step without             
          grinding the protecting sheet.”                                             

               As framed and argued by the appellants (see pages 7 through            
          9 in the main brief and pages 4 through 6 in the reply brief),              
          the dispositive issue with regard to the anticipation rejection             
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