Appeal No. 2001-1700 Page 6
Application No. 09/160,964
of ordinary skill in the art to modify the method of Peng so
as to arrive at the claimed subject matter, including the
above-noted limitations. “It is well-established that before
a conclusion of obviousness may be made based on a combination
of references, there must have been a reason, suggestion, or
motivation to lead an inventor to combine those references.”
Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). The
examiner (answer, pages 4-6) has only made general statements
regarding the applicability of the rounded edges of a
protective layer for a die in Farnworth in the semiconductor
wafer processing method of Peng without persuasively
specifying why one of ordinary skill in the art would have
been led by any particular disclosure of Farnworth to modify
the particular method of Peng so as to arrive at the herein
claimed subject matter. The examiner has not fully set forth
why one of ordinary skill in the art would have found the
tapered edge (37, figure 4) or rounded edges of window (60,
figure 4) of the protective layer (36, figure 4) of the dice
of Farnsworth (column 5, lines 1-9 of Farnsworth and page 4 of
the answer), which are disclosed as having certain advantages
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