Ex Parte Ronay - Page 4

                Appeal 2006-2351                                                                                 
                Application 10/645,493                                                                           
                   8. Claims 34 and 35 are rejected under 35 U.S.C. § 103(a) as being                            
                       unpatentable over Molnar I in view of Molnar II.                                          

                   Appellant separately argues independent claim 17 and dependent claims                         
                24, 32, and 34.  Accordingly, non-argued dependent claims 18-23, 25-31,                          
                33, and 35-36 stand or fall with the argued claims.                                              
                                                                                                                
                                                    OPINION                                                      
                35 U.S.C. § 102(b) REJECTION OVER MOLNAR I                                                       
                INDEPENDENT CLAIM 17                                                                             
                       Appellant argues that use of the claim phrase “consists essentially of,”                  
                when reciting the structure of the polishing pad in claim 17, excludes the                       
                presence of materials such as abrasive particles in the pad in amounts that                      
                would materially change the basic characteristics of the claimed invention                       
                (Br. 6).  Appellant further contends that Molnar I’s finishing element (i.e.,                    
                polishing pad) contains abrasive particles and thus is not encompassed by                        
                the restrictive claim language, “consists essentially of” (Br. 6).  Appellant                    
                further argues that the portion of  Molnar I’s disclosure relied on by the                       
                Examiner to support inherency, column 29, lines 8-11, relates solely to                          
                liquid slurry compositions wherein the lubricant and abrasive particles are                      
                contained in the slurry compositions not in a finishing element (i.e., pad)                      
                (Br. 6).  Appellant argues that Molnar I discloses using both liquid and solid                   
                lubricants such that “one would have to make fortuitous selections among a                       
                myriad of possibilities” (Br. 7).                                                                
                       We have considered all of Appellant’s arguments and find them                             
                unpersuasive for the reasons discussed below.                                                    

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