Appeal 2007-1372
Application 10/423,283
We have thoroughly reviewed the respective positions advanced by
the Appellants and the Examiner. In so doing, we find ourselves in
agreement with Appellants that the Examiner has failed to established a
prima facie case of obviousness for the claimed subject matter.
Accordingly, we will not sustain the Examiner's rejections.
Sun, like Appellants, discloses a method of machining a substrate with
a slurry comprising the presently claimed alumina abrasive and a
phosphorus compound. However, as acknowledged by the Examiner, Sun
fails to teach that the slurry can be used to machine a substrate comprising
aluminum oxide, as presently claimed. As a result, the Examiner relies upon
Orii for disclosing machining a substrate comprising aluminum oxide.
Because Sun discloses that the abrasive-containing slurry can machine a
nickel-containing substrate, and the machined substrate of Orii comprises
alumina and nickel, the Examiner draws the legal conclusion that "[i]t would
have been obvious to one of ordinary skill in the art at the time the invention
was made to use the composition of Sun to polish a composition substrate
comprising aluminum oxide (alumina) and nickel containing materials such
as the air-bearing surface of Orii et al." (Answer 3, penultimate para.).
The fatal flaw in the Examiner's position is that Orii, as urged
Appellants, is specifically directed to using an abrasive-free slurry for
machining the substrate. Orii expressly discloses "using a lap liquid
containing no abrasive grains" (para. 0021, last sentence). Hence, it can not
be gainsaid that Orii provides no teaching or suggestion of utilizing an
abrasive-containing polishing slurry of the type disclosed by Sun for
machining a substrate comprising aluminum oxide. The Examiner's
3
Page: Previous 1 2 3 4 5 Next
Last modified: September 9, 2013