Ex Parte Ronay - Page 11

                Appeal 2006-2351                                                                                 
                Application 10/645,493                                                                           
                35 U.S.C. § 103(a) REJECTION OVER MOLNAR I IN VIEW OF                                            
                CHIDDICK                                                                                         
                DEPENDENT CLAIM 32                                                                               
                       Claim 32 depends upon claim 17 and further recites that the “lubricant                    
                particles comprises at least one member selected from the group consisting                       
                of a binding agent, coupling agent or adhesive promoter” (claim 32).                             
                       For dependent claim 32, Appellant further argues that Molnar I and                        
                Chiddick are not combinable since Chiddick does not relate to polymeric                          
                compositions (Br. 9).   Appellant additionally argues that there is no                           
                motivation for “combining Chiddick with Molnar [I]” (Reply Br. 4).  We                           
                cannot agree with Appellant’s arguments.                                                         
                       Molnar I discloses a finishing element comprising solid lubricant                         
                particles for finishing the surface of a semiconductor wafer (Molnar I, col.                     
                22, ll. 22-25; col. 28, ll. 50-67; col. 29, ll. 1-11).  Molnar I further discloses               
                that supplying an effective amount of lubricant reduces the coefficient of                       
                friction between the workpiece surface and the finishing element finishing                       
                surface such that unwanted surface damage is reduced (Molnar I, col. 23, ll.                     
                52-55).                                                                                          
                       Chiddick discloses a solid lubricant along with a binding agent in                        
                water medium (Chiddick, col. 1, ll. 9-13).  Chiddick further discloses that                      
                the “binding agent . . . helps to bind the lubricant and friction modifier to the                
                . . . surface [of the item being lubricated]” (Chiddick, col. 2, ll. 31-34).                     
                       From these disclosures, Molnar I and Chiddick are combinable                              
                because one of ordinary skill in the art would have looked to Chiddick’s                         
                disclosure to use a binding agent to adhere the lubricant to the surface being                   
                treated with Molnar I’s process of finishing to better adhere the lubricant to                   

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