Ex Parte Fuentes et al - Page 4



          Appeal No. 2006-0312                                                        
          Application No. 10/145,171                                                  

          on the wafer.  As in appellants’ apparatus, the ionized air is              
          used in JP ‘790 to reduce the accumulation of electrostatic                 
          charge on the wafer surface.                                                
               The principal argument advanced by appellants is that JP               
          ‘790 does not disclose directing the ionized gas onto the                   
          substrate, prior to dicing and after the thickness of the                   
          substrate is reduced by grinding which, according to appellants,            
          reduces warpage of the substrate.  Appellants emphasize that the            
          ionized air of JP ‘790 is provided during the grinding process,             
          not afterwards, and the ionized air is not directed to the                  
          substrate.                                                                  
               The flaw in appellants’ argument, as explained by the                  
          examiner, is that the argument is not germane to the subject                
          matter on appeal.  While the appealed claims define an apparatus,           
          appellants’ argument is directed to a process of operation                  
          performed by the apparatus.  The examiner has set forth                     
          persuasive reasoning that the apparatus of JP ‘790 is fully                 
          capable of directing ionized air onto the substrate after the               
          grinding process and prior to the dicing step.  On the other                
          hand, appellants have not presented a convincing line of                    
          reasoning which demonstrates that the apparatus of JP ‘790 is not           
          capable of directing ionized air onto the substrate prior to                
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