Appeal No. 2004-1231
Application 09/481,224
make the modification proposed by the Examiner. The Federal
Circuit held that the totality of the record must be considered.
Even when changes from the prior art are “minor” or “simple,” an
inquiry must be made as to whether “the prior art provides any
teaching or suggestion to one of ordinary skill in the art to make
the changes.“ In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089,
1094-95 (Fed. Cir. 1995). A finding of “obvious design choice” is
precluded where the claimed structure and the function it performs
are different from the prior art. In re Chu, 66 F.3d at 299, 36
USPQ2d at 1095 (Fed. Cir. 1995) citing In re Gal, 980 F.2d 717,
719, 25 USPQ2d 1076, 1078 (Fed. Cir. 1992). See also Monarch
Knitting Machinery Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 45
USPQ2d 1977 (Fed. Cir. 1998).
In this case, the location of the pre-conditioning platform
performs the function of preconditioning a conditioning disc,
hence, it is different from the function of polishing a wafer of
the prior art CMP apparatus. Therefore, we will not sustain the
Examiner’s rejection under 35 U.S.C. § 103.
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