Appeal No. 2006-0312
Application No. 10/145,171
dicing and after grinding. Appellants’ mere citation of
reference figure 1 fails to persuade us that the reference
apparatus is not capable of performing the recited operation.
It is well settled that apparatus claims must distinguish
over prior art apparatus by the structure defined by the claims,
and not by a process or function performed by the apparatus. A
prior art apparatus having the same or obvious structure as a
claimed apparatus renders a claimed apparatus unpatentable under
either Section 102 or Section 103 as long as it is capable of
performing the claimed process or function. In re Yanush, 477
F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); Ex Parte Masham,
2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). Appellants’
statement that “[t]he fact that a device is capable of doing
something is not sufficient to satisfy the prima facie case of
anticipation, or obviousness” is not in accord with current
patent jurisprudence, (page 2 of reply brief, third paragraph).
As for the claim recitation that the ionized air reduces the
substrate warpage, we agree with the examiner that it is
reasonable to conclude that the ionized air treatment of JP ‘790
also necessarily reduces the warpage of the reference substrate.
This is so because, as explained by the examiner, appellants’
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