Appeal 2007-1017
Application 10/204,997
1 In one embodiment, Roberts teaches that the pad may be made by
2 placing a solid or semi-solid insert in an enclosure and then forcing a
3 flowable material into the enclosure, thereby causing the insert to be bonded
4 to or within the flowable material after solidification. (FF33.) Roberts
5 further teaches that the pad may be made from polyurethane, the same
6 material disclosed as preferred for Applicant’s wheel, and that the pad may
7 include abrasive particles. (FF27, 34-35.) Additionally, the Examiner found
8 that Roberts’s pad has elastic modulus and Shore D hardness values that
9 significantly overlap those recited in appealed claim 12. (FF36.) That
10 Roberts describes, with sufficient specificity, a pad having an elastic
11 modulus and a Shore D hardness within the claimed ranges is not contested.
12 (FF37.) Nor does Applicant dispute that, when Roberts’s pad is used on
13 Hasegawa’s wheel, the resulting wheel would not have the elastic modulus
14 and Shore D hardness recited in appealed claim 12. (FF38.)
15 On this record, we agree with the Examiner that the subject matter of
16 appealed claim 12 would have been obvious to a person having ordinary
17 skill in the art over the prior art within the meaning of 35 U.S.C. § 103(a).
18 Even under a rigid application of the teaching, suggestion, or motivation
19 test, the Examiner’s rejection passes muster. Specifically, the teachings of
20 Roberts would have led one of ordinary skill in the art to use Roberts’s
21 polishing pad material to fabricate Hasegawa’s polishing member 13 with
22 the reasonable expectation that polishing performance and predictability of
23 polishing performance would be improved as disclosed in Roberts, thus
24 arriving at an apparatus encompassed by appealed claim 12. Here,
25 Applicant did not show that the modification of Hasegawa for the purpose of
26 achieving the benefits disclosed for Roberts polishing material would be
13
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