Ex Parte Laconto et al - Page 2

               Appeal 2007-1372                                                                             
               Application 10/423,283                                                                       

               comprising alumina abrasive and an additive comprising a phosphorus                          
               compound; and                                                                                
                      moving substrate relative to the machine tool to machine the surface                  
               of the substrate.                                                                            

                      The Examiner relies upon the following references as evidence of                      
               obviousness:                                                                                 
               Iwasaki   US 5,549,978   Aug. 27, 1996                                                       
               Katayama   US 5,999,368   Dec. 7, 1999                                                       
               Orii    US 2001/0009840 A1  Jul. 26, 2001                                                    
               Sun    US 6,604,987 B1   Jun. 6, 2002                                                        
                      Appellants' claimed invention is directed to a method for machining a                 
               substrate comprising aluminum oxide.  A slurry comprising an abrasive,                       
               such as alumina, and a phosphorus compound is provided between the                           
               substrate and a machining tool that are moving relative to each other.                       
               According to Appellants, they "have discovered that use of such a slurry                     
               containing both an abrasive and the particular additive is particularly                      
               advantageous in the context of aluminum-containing ceramics, notably                         
               aluminum oxide ceramics such as single crystal sapphire" (Br. 2,                             
               penultimate para.).  Appellants further state that "increased removal rates are              
               achieved without sacrificing surface quality through conventional techniques                 
               such as increasing abrasive grain size" (id.).                                               
                      Appealed claims 30 and 34-49 stand rejected under 35 U.S.C.                           
               § 103(a) as being unpatentable over Sun in view of Orii.  Claims 31-33 stand                 
               rejected under 35 U.S.C. § 103(a) as being unpatentable over the stated                      
               combination of references further in view of Iwasaki.                                        


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