Appeal No. 2005-1220
Application No. 09/270,606 Page 11
Consequently, we are in full agreement with the examiner’s
obviousness determination of the subject matter of representative
claim 1 over the combined teachings of the applied prior art.
In light of the above discussion, appellant’s arguments
concerning a lack of suggestion of the claimed subject matter in
the applied references is not persuasive. Concerning the
examiner’s combination of Grover and Burke with Kodera, we note
that the applied prior art need not disclose the same function
for the modified slurry composition that is employed as that
disclosed by appellant for the prior art to render the use of a
slurry composition, as claimed, obvious within the meaning of
§ 103(a). See, e.g., In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
polishing rates without appellant having particularly defined or
having specified a particular way of assessing the meets and
boundaries of those terms of degree in the specification, as
filed. Nevertheless, for reasons stated above, we determine that
the merits of the examiner’s obviousness rejection can be
assessed by giving those claim terms a reasonable conditional
claim interpretation based on their broadest reasonable meaning
in light of appellant’s drawing figure representations, as
discussed above. However, in the event of further prosecution of
this subject matter before the examiner, the examiner should
determine whether or not the claims are compliant with the second
paragraph of § 112 in light of those terms of degree as employed
in the claims. After all, a principal purpose of the second
paragraph of § 112 is to provide those who would endeavor, in
future enterprises, to approach the area circumscribed by the
claims of a patent, with adequate notice demanded by due process
of law, so that they may more readily and accurately determine
the boundaries of protection involved and evaluate the
possibility of infringement and dominance. See In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
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