Ex Parte Hagiwara - Page 3

              Appeal 2007-1017                                                                        
              Application 10/204,997                                                                  
          1   Roberts et al. (Roberts)  US 6,217,434 B1  Apr. 17, 20011                               
          2                                                                                           
          3          Hasegawa is available as prior art under 35 U.S.C. § 102(b); Roberts             
          4   is prior art under 35 U.S.C. § 102(e).                                                  
          5          The Examiner found that Hasegawa describes each and every element                
          6   of appealed claim 12, “except for disclosing the properties of the polishing            
          7   device.”  (Answer 3.)  The Examiner further found that Roberts teaches                  
          8   resin-bonded abrasive polishing pads, which have elastic modulus and Shore              
          9   D hardness values that significantly overlap those recited in appealed claim            
         10   12, provide “advantageous hydrophilic polishing materials and innovative                
         11   surface topography and texture.”  (Id., citing Roberts, abstract.)  Based on            
         12   these findings, the Examiner held that one of ordinary skill in the art would           
         13   have found it obvious to modify the apparatus described in Hasegawa to                  
         14   include Roberts’s resin-bonded abrasive polishing pad, thus arriving at an              
         15   apparatus encompassed by appealed claim 12.  (Answer 4.)                                
         16          Applicant, on the other hand, contends: (i) Hasegawa teaches a                   
         17   “buffing pad, not intended to abrade the edge of wafer W [workpiece]”; (ii)             
         18   Hasegawa does not teach “a generally perpendicular relative motion” of the              
         19   wheel relative to the edge to be abraded, as shown in Figure 2 of the                   
         20   application; (iii) Roberts “does not teach a resin-bonded abrasive wheel                
         21   abrading the edge of a rigid brittle plate”; and (iv) the references “do not            


                                                                                                     
                     1  Roberts issued from Application 09/465,566 filed on December 17,              
              1999, which is a continuation of Application 09/054,948 filed on April 3,               
              1998 (now United States Patent 6,022,268).  It also claims priority to                  
              provisional applications 60/043,404 and 60/049,440, filed on April 4, 1997              
              and June 12, 1997, respectively.                                                        
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