Appeal 2007-1522
Application 10/631,698
Kambe provides no teaching that an oxidizing agent should not be used in
combination with abrasive particles of MoO2.
Regarding the separate rejection of claim 29 over the combined
teachings of Chamberlin, Kambe, and Hasegawa, we find no error in the
Examiner’s conclusion that it would have been obvious for one of ordinary
skill in the art to add EDTA to the polishing composition of Chamberlin.
We are not persuaded by Appellants’ argument that Hasegawa teaches away
from the present invention since the reference teaches that it is preferable
for the aqueous polishing composition not to contain an abrasive material.
Certainly, a preference for not using an abrasive also provides a teaching
that an abrasive may be used while accompanied by certain disadvantages,
such as when soft and hard parts are to be polished together. It is well
settled that the use of non-preferred embodiments of the prior art are a
matter of obviousness for one of ordinary skill in the art. In re Burckel, 592
F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In re Susi, 440 F.2d 442,
446 n.3, 169 USPQ 423, 426 n.3 (CCPA 1971).
Accordingly, Hasegawa’s non-preferred use of an abrasive material
does not undermine the obviousness of using a known chelating agent,
EDTA, in the polishing solution of Chamberlin. Chamberlin discloses that
“the slurry compositions can contain conventional auxiliary components”
and states no prohibition against using conventional chelating agents (para.
[0015]). We note that Appellants lodge no argument why it would have
been nonobvious for one of ordinary skill in the art to employ a conventional
7
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013