Appeal No. 2003-0291 Page 9
Application No. 09/569,074
template 9) are art recognized functional equivalents due to the disparate nature of
Hasegawa's and Ball's inventions.2 Thus, the substitution of one for other would not
have been obvious to one of ordinary skill in the art at the time the invention was made.
In our view, the only suggestion for modifying Hasegawa in the manner proposed by the
examiner to arrive at the claimed invention stems from hindsight knowledge derived
from the appellant's own disclosure.3
For the reasons set forth above, the decision of the examiner to reject claims 1
to 4 and 7 to 9 under 35 U.S.C. § 103 as being unpatentable over Hasegawa in view of
Ball is reversed.
2 Hasegawa's invention is a holding mechanism for holding a semiconductor wafer while the wafer
is being polished while Ball's invention is a holding mechanism for holding a plurality of dies which are
simultaneously being ground down by one or more grinding wheels.
3 The use of such hindsight knowledge to support an obviousness rejection under 35 U.S.C. § 103
is, of course, impermissible. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
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