Ex Parte Sekiya et al - Page 7



         Appeal No. 2006-1870                                       Παγε 7                          
         Application No. 10/100,901                                                                 

         hardness and density lower range limits are critical because                               
         density and hardness values below these limits make it difficult                           
         to effectively polish the semiconductor wafer.  Appellants add                             
         that nothing in Jefferies would have suggested to an artisan in                            
         the semiconductor wafer polishing art that they should consider                            
         dental polishing teachings as applicable to their needs.                                   
              From our review of the entire record, we are in agreement                             
         with appellants, for the reasons which follow, that the teachings                          
         and suggestions of Jefferies would not have suggested the                                  
         language of claim 1.  As noted by appellants, Jefferies is                                 
         directed to a polishing device for residual orthodontic adhesive                           
         removal for debonding orthodontic adhesive on a tooth and                                  
         polishing residual orthodontic adhesive from a tooth (col. 3,                              
         lines 25-32).  We find no teaching or suggestion in the                                    
         reference, and no teaching or suggestion has been pointed to by                            
         the examiner, that would have taught or suggested using the                                
         dental polishing tool of Jefferies for polishing semiconductor                             
         wafers.  The reference might have been sufficient if the                                   
         reference met all of the limitations of the claim and were                                 
         capable of polishing semiconductor wafers, and was used in a                               
         rejection under 35 U.S.C. § 102.  However, to modify the                                   
         reference to provide the claimed hardness or density, there would                          













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