Appeal No. 1998-1681 Page 9
Application No. 08/523,075
during the etching. Nor has the examiner established that any
of the secondary references applied make up for this
deficiency.
From our perspective, Miura is the closest prior art
reference that is applied by the examiner. However, Miura
irradiates the wafer with a laser without describing or
suggesting an etch of the wafer following the resist removal
step and before the laser irradiation. See the fifth page of
the English translation and figure 2 of Miura.
While the examiner (answer, pages 8 and 9) makes findings
regarding advantages associated with detection of the etched
substrate (unetched portion) versus detection of the gel
itself, the examiner has not shown where those advantages are
established as known in the cited prior art such that the
prior art teachings alone would have fairly suggested, to one
of ordinary skill in the art, modifying Elliott in a manner so
as to arrive at the claimed process. Rather, the motivation
relied upon by the examiner appears to come solely from the
description of appellant’s invention in their specification.
Thus, the examiner used impermissible hindsight when rejecting
the claims. See W.L. Gore & Associates v. Garlock, Inc., 721
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007