Appeal 2006-3286
Application 10/422,290
OPINION
The Examiner finds, and Appellant does not dispute, the following
facts:
(1) Yamamoto discloses a semiconductor wafer having first and
second flat surfaces of a first diameter (Answer 3);
(2) Yamamoto discloses a thinning process where semiconductor
material may be removed from the second wafer surface by
grinding or etching until the intended thickness is achieved (id.);
(3) Yamamoto teaches that a support tape having a second diameter
may be used, where the second diameter is greater than the first
diameter (id.);
(4) Yamamoto does not disclose that the periphery between the wafer
edges may be rounded (id.); and
(5) Xin teaches that the peripheral edge of each wafer may first be
rounded before further processing in order to reduce the risk of
wafer damage during this processing (id.).
It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine these references.
See Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). “When relying on
numerous references or a modification of prior art, it is incumbent upon the
examiner to identify some suggestion to combine references or make the
modification. [Citation omitted].” In re Mayne, 104 F.3d 1339, 1342,
41 USPQ2d 1451, 1454 (Fed. Cir. 1999).
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