Ex parte D'ARAGONA et al. - Page 6




          Appeal 97-1618                                                              
          Application 08/368,078                                                      

          removal of "a portion of the first wafer from the rounded edge              
          into a portion of the first wafer *** so that the second major              
          surface of the first wafer is supported by the first major                  
          surface of the second wafer ***."  The meaning of "portion"                 
          becomes clear upon consultation of the specification:  "[t]he               
          grinding at edge 18 must remove substantially all of the                    
          portion of the active [first] wafer 12 that is not supported                
          by or not bonded to base [second] wafer 10" (specification,                 
          page 3, lines 30-32).  The Nomura process also removes a                    
          considerable portion of the second wafer such that "the                     
          diameter of the second wafer" does not remain "essentially the              
          same" as required by claim 1.  Accordingly, Nomura does not                 
          provide sufficient evidence upon which to support the                       
          obviousness of limitation of claim 1 which requires removal of              
          "a portion of the first wafer from the rounded edge into a                  
          portion of the first wafer *** so that the second major                     
          surface of the first wafer is supported by the first major                  
          surface of the second wafer *** [and] the diameter of the                   
          second wafer remains essentially the same."                                 
               Claims 2 and 3 depend from claim 1.  If the broad subject              
          matter of claim 1 has not been shown to have been obvious over              

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