Ex parte QUINN et al. - Page 6




          Appeal No. 1997-3727                                                        
          Application 08/416,127                                                      


          Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.                 
          1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,               
          147 (CCPA 1976).                                                            
               We take the independent claim 4.  Whereas we agree with                
          the Examiner that Suda shows a groove [6,7] which does form a               
          back-cut, we do not find the claimed step of “sawing the chip               
          near the groove ....”  We agree with Appellants [brief, page                
          7] that “[n]ot only is the [sawing] step ... not disclosed in               
          any cited art, but neither reference, alone or in combination,              
          suggests that performing this step is at all desirable.”  In                
          fact, this type of sawing would be counter to the objective of              
          suda’s invention of producing chips out of a wafer, not                     
          destroying them.  Therefore, we do not sustain the obviousness              
          rejection of claim 4 and its grouped claims 3 and 5 over                    
          Sugimoto and Suda.                                                          




               In conclusion, we reverse the Examiner’s final rejection               
          of claims 1 under 35 U.S.C.  102 over Sugimoto.  Further, we               
          reverse the obviousness rejection under 35 U.S.C.  103 of                  


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