Appeal No. 2004-1357
Application 09/587,281
reasonable basis for the examiner’s determination that the
conventional method described by Nishida also meets the
limitation in claim 7 requiring the step of “removing a portion
of the second surface of the wafer by grinding to a predetermined
finishing thickness of the wafer after the cutting step without
grinding the protecting sheet.” The conventional method, which
reduces the thickness of the wafer to approximately 64% of its
original thickness, would not involve any grinding of the
protecting sheet 5 which, as shown in Figure 2 and described in
the translation, would not extend to the level of such a ground
finishing thickness. The appellants’ contention that the
“predetermined finishing thickness” recited in claim 7 is akin to
that shown in Figure 5 of the appellants’ drawings where more
than half of the thickness of the wafer is removed by grinding
rests on an improper reading of limitations from the
specification into the claim. On its face, the 400 :m ground
thickness disclosed by Nishida constitutes a “predetermined
finishing thickness” to the extent broadly recited in claim 7.
Thus, the appellants’ position that the argued limitations
in claim 7 distinguish the subject matter recited therein over
that disclosed by Nishida is unconvincing.
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