Appeal No. 2003-0454 Page 3
Application No. 09/644,734
the rejections, and to the brief (Paper No. 6, filed May 6, 2002) and reply brief (Paper
No. 8, filed September 9, 2002) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Claims 1 to 7, 10 to 20 and 23 to 37
The appellants argue (brief, pp. 7-8 and 10) that the limitation that the second
conditioning surface is comprised of a material that is substantially the same as the
material to be polished off the substrate as recited in independent claims 1, 16 and 29
is not taught by Miyashita. The examiner has determined (answer, pp. 3-5) that this
limitation is met by Miyashita. Thus, this appeal requires us to fully understand1 the
scope of the terminology "substantially the same" as used in claims 1, 16 and 29.
1 Analysis of whether a claim is patentable over the prior art begins with a determination of the
scope of the claim. The properly interpreted claim must then be compared with the prior art. Claim
interpretation must begin with the language of the claim itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
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