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.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013