Appeal No. 2002-2159 Page 4
Application No. 09/652,969
The examiner has rejected independent claim 38 and dependent claims 39 and
40 under Section 103 as being obvious1 in view of the combined teachings of Iwata and
Milina. It is the examiner’s view that Iwata discloses all of the subject matter recited in
claim 38 except for the nozzles having an extended and retracted position, but that it
would have been obvious to one of ordinary skill in the art to add such a feature to
Iwata in view of the teachings of Milina. In this regard, the examiner has taken the
position that the motivation for the proposed modification is to “provide ease of loading
and unloading the wafer onto the holder” (Answer, page 4). The appellant argues in
rebuttal that the examiner’s rejection is defective for two reasons. The first of these is
that in Iwata the nozzle that dispenses the chemical is not disposed toward the
workpiece, as is required by claim 38. The second is that neither of the references
teach that the nozzle and the suction applicator be movable commensurately in order to
provide ease of loading and unloading, and thus there is no evidence to support the
examiner’s position that it would have been obvious to do so for the reason advanced
by the examiner.
1The 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 appellant's 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).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007