Appeal 2006-2759
Application 10/043,860
mechanically polishing . . . comprising applying at least an abrasive slurry,”
respectively, of claim 1.
Appellants argue that the ground of rejection must address each of the
members of a Markush group, pointing out that Torii does not disclose the
method of “dry etching with a fluorocarbon chemistry” which is the first
method in the Markush group specified in the claimed second step (Br. 7).
We know of no authority which requires that the Examiner must find that all
members of a Markush group would have been obvious over the prior art,
including In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958), and In re
Scott, 323 F.2d 1016, 139 USPQ 297 (CCPA 1963) cited by Appellants (Br. 8).
All that is required is that the Examiner establish that the claimed
embodiments represented by at least one member of a Markush group would
have been obvious over the prior art in order to make out a prima facie case
of obviousness.
With respect to Appellants’ contentions that “Torii does not disclose a
pH for the alkali solution” (Br. 8-9; original emphasis deleted), we find that
the reference would have disclosed that the first polishing step can be
“prepared to have pH 10 to 12 using ammonia and contain . . . silica as an
abrasive” (Torii cols. 2-3, ¶ 0027).
We cannot subscribe to Appellants’ position that Miller teaches away
from the claimed method encompassed by claim 1 simply because the
method taught therein employs different steps than claimed. See generally,
In re Kahn, 441 F.3d 977, 985-89, 78 USPQ2d 1329, 1334-38 (Fed. Cir.
2006) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
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