Appeal No. 2003-0454 Page 10
Application No. 09/644,734
value, urging said first conditioning surface into contact with said polishing pad and
providing relative movement between said first conditioning surface and said pad."
Since the examiner has not determined that it would have been obvious at the
time the invention was made to a person of ordinary skill in the art to have modified
Miyashita to arrive at the claimed invention, the examiner has not established a prima
facie case of obviousness6 with respect to claims 38 to 44. Accordingly, the decision of
the examiner to reject claims 38 to 44 under 35 U.S.C. § 103 is reversed.
Claims 45 to 77
The appellants argue (brief, pp. 8 and 10) that the limitation that the second
conditioning surface is comprised of a material that may be polished off more easily
than the material to be polished off the substrate as recited in independent claims 45,
58 and 69 is not taught by Miyashita. The examiner has determined (answer, pp. 3-5)
that this limitation is met by Miyashita.
6 In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993). A prima facie case of obviousness is established by presenting evidence that the reference
teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references
before him to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at the claimed invention. See In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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