Appeal No. 2001-2184
Application 09/005,364
The examiner has not explained how one of ordinary skill in
the art, given the teaching by Tanaka that vacuum suction tends
to cause slurry gelation, and considering the lack of an
indication by Nakashiba that any additional wafer holding
mechanism is needed, would have been led by the references
themselves to use vacuum to hold Nakashiba’s wafer. Furthermore,
the examiner clearly has not provided evidentiary support for the
above-mentioned argument that the applied references would have
led one of ordinary skill in the art to use vacuum to adjust the
pressure on the back of the wafer while polishing the wafer.
The record indicates that the motivation relied upon by the
examiner for using vacuum to hold Nakashiba’s wafer and to adjust
the pressure applied to the back of the wafer while polishing the
wafer comes from the description of the appellants’ invention in
their specification rather than coming from the applied prior
art. Hence, the record indicates that the examiner used
impermissible hindsight when rejecting the claims. See W.L. Gore
& Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we reverse the examiner’s rejection.
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