Appeal No. 2001-0864
Application No. 08/841,214
above, and we will not sustain the rejection of independent claim 1 and its dependent
claims 2-5, 8, and 10. Independent claim 11 contains similar limitations which are not
taught or suggested by the combination of Womack, Boehnlein and Bou-Ghannam.
Therefore, we will not sustain the rejection of independent claim 11 and its dependent
claims 12-15, 18, and 20. With respect to dependent claims 6, 7, 16, and 17, the
examiner does not rely upon the teaching of Cuthbert for the limitations that we found
lacking in the combination above. Therefore, Cuthbert does not remedy the basic
deficiency in the combination of Womack, Boehnlein and Bou-Ghannam as presented
by the examiner, and we will not sustain the rejection of claims 6, 7, 16, and 17.
Additionally, we note that appellants argue the teachings of the three references
are not properly combinable. (See brief at page 7.) We agree with appellants. From
our review of the teachings of Womack with respect to wafer analysis, we find no
teaching, suggestion or convincing line of reasoning by the examiner to look to the
teachings of Boehnlein with respect to defects in panels of sheet material and then look
to the teachings of Bou-Ghannam with respect to inspection of substrates for printed
circuit boards. Therefore, we do not find the teachings of the three references to be
properly combined to teach or suggest the invention as claimed. This is similarly
extended to the teachings of Cuthbert.
CONCLUSION
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