Appeal No. 2002-1025 Page 3
Application No. 09/454,354
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The claims stand rejected as being obvious under 35 U.S.C. § 103(a). The test
for obviousness is what the combined teachings of the prior art would have suggested
to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of obviousness, it
is incumbent upon the examiner to provide a reason why one of ordinary skill in the art
would have been led to modify a prior art reference or to combine reference teachings
to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat.
App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the appellants’ disclosure. See,
for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The appellants’ invention relates to thermally preconditioning by means such as
hot water the fixed abrasive pads used for polishing semiconductor wafers. According
to the appellants, the invention removes embedded debris from the surface of the
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