Appeal No. 2003-0454 Page 12
Application No. 09/644,734
polished off substrates not disclosed by Miyashita, such a rejection, if proper, would lie
under 35 U.S.C. § 103, not under 35 U.S.C. § 102.
For the reasons set forth above, the examiner has not presented a prima facie
case of anticipation with respect to independent claims 45, 58 and 69. Accordingly, the
decision of the examiner to reject independent claims 45, 58 and 69 and claims 46 to
52, 54 to 57, 59 to 63, 65 to 68 and 70 to 75 under 35 U.S.C. § 102(b) is reversed.
Additionally, the decision of the examiner to reject dependent claims 53, 64, 76 and 77
under 35 U.S.C. § 103 is reversed since the examiner has not established the subject
matter of their parent claims (i.e., claims 45, 58 and 69) would have been obvious at the
time the invention was made to a person of ordinary skill in the art.
REMAND
We remand this application to the examiner to further consider the patentability
of the claims under appeal in light of the decisions made herein. Specifically, the
examiner should determine if a dresser made by sintering alumina, silicon nitride,
silicon carbide or the like as taught by Miyashita can or cannot be polished off more
easily than the materials to be polished off the substrates disclosed by Miyashita (e.g.,
a polysilicon film, a SiO2 film). Based on that determination, the examiner should
determine the patentability of claims 45 to 77. In addition, the examiner should
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