Appeal 2007-1017
Application 10/204,997
1 Second, appealed claim 12 lacks any discernible limitation that would
2 exclude the type of relative motion disclosed for Hasegawa’s polishing
3 device 11 and wafer W. On this issue, we note that Applicant belatedly
4 attempted to amend claim 12 to recite that the abrasive wheel rotates “in a
5 direction perpendicular to the edge to be abraded,” but this amendment was
6 denied entry. (FF8-10.) While Applicant refers to Figure 2B of the
7 Specification, this is merely one embodiment of an invention that is claimed
8 to the broadest possible extent possible, as evidenced by Applicant’s own
9 notice that the claim should not be “unduly limited to the illustrative
10 embodiments.” (FF3-4.) In any event, Applicant is wrong that the relative
11 motion between Hasegawa’s polishing device 11 and wafer W is “parallel.”
12 Hasegawa’s Figure 3, for example, shows that the orientation of an edge of
13 wafer W, 1a, is actually perpendicular to the polishing device 11. (FF25.)
14 Moreover, appealed claim 12 is directed to an apparatus. The relative
15 motion of the wheel to a workpiece merely defines an intended use that has
16 not been shown to further limit the claimed apparatus.
17 Applicant argues that Roberts does not remedy the “deficiency” of
18 Hasegawa because “[i]t is the major surface of the pad of Roberts...and not
19 an outer peripheral edge, that is in contact with the plate being abraded.”
20 (Br. 5.) We are not persuaded by this argument because the Examiner is
21 relying on the combined teachings of Hasegawa and Roberts. Upon
22 modification of Hasegawa in view of Roberts, an apparatus within the scope
23 of appealed claim 12 would have resulted because Hasegawa’s apparatus
24 polishes an edge of the wafer. (FF14, 21, 25). In re Keller, 642 F.2d 413,
25 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not
26 whether the features of a secondary reference may be bodily incorporated
15
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