Appeal No. 2006-1870 Παγε 9
Application No. 10/100,901
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992)(citing In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991)).
Here, the examiner's broad, conclusory opinion of
obviousness does not meet the requirement for actual evidence.
Because Jefferies does not address polishing of semiconductors or
similar devices, we are not persuaded that teachings from the
applied prior art would have suggested the claimed limitations.
From all of the above, we hold that the examiner has failed
to establish a prima facie case of obviousness of claim 1.
Accordingly, we cannot sustain the rejection of claim 1 or claims
2-6 and 8-10, which depend therefrom.
We turn next to the rejection of claim 9 under 35 U.S.C.
§ 103(a) as being unpatentable over Jefferies in view of James.
We cannot sustain the rejection because even though James is
directed to an apparatus for polishing a semiconductor, we find,
for the reasons, supra, no teaching or suggestion that would have
led an artisan to modify the dental polisher of Jefferies.
Under our authority provided in 37 CFR § 41.50(b) we enter a
New Ground of Rejection of claims 1 and 9 under 35 U.S.C.
§ 102(b) as being anticipated by, or in the alternative under 35
U.S.C. § 103(a) as being obvious over James. James is directed
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