Appeal No. 2003-0123
Application No. 09/383,781
second illumination. (Col. 4, ll. 23-26). While the invention of Tanaka might be
used on the back side of a semiconductor device, the Examiner has not provided
motivation for such a modification. Neither Tanaka nor Takemura disclose the
desirability of providing an image path to the underlying circuit side. Moreover,
there is no indication that the two step illumination of Tanaka would provide the
insulation property described by Takemura. The mere fact that the prior art could be
modified would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984); In re Laskowski, 871 F.2d 115, 117, 10
USPQ2d 1397, 1398 (Fed. Cir. 1989). The record indicates that the motivation
relied upon by the Examiner suggesting the combination of Tanaka and Takemura
came from the Appellants’ description of the invention in the specification rather
than from the applied prior art and that, therefore, the Examiner used impermissible
hindsight in rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
The subject matter of claim 9 requires laser-chemical etching the back side of
the semiconductor device using two different power levels and using light to capture
an image of the circuit through the back side of the semiconductor device. As stated
-9-
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