Appeal 2007-1522
Application 10/631,698
the abrasive materials listed by Canaperi. Furthermore, one of ordinary skill
in the art would have chosen MoO2 from the list disclosed by Kumar since
Kumar teaches that all the abrasive materials included in the list are
effective. It is well settled that choosing one from among many taught by
the prior art to be useful for a particular purpose is a matter of obviousness
for one of ordinary skill in the art. While Appellants maintain that “different
polishing slurries have widely varying polishing selectivity for different
materials, as demonstrated by the specification and the prior art” (principal
Br. 15, first para.), we are satisfied that one of ordinary skill in the art would
have needed to resort to no more than routine experimentation to determine
the specific polishing slurries that are most effective for polishing a
particular material.
Appellants also have “submitted the declaration of inventors Babu,
Jha and Hegde describing tests showing the unsuitability of H2O2 as an
oxidizing agent in combination with MoO2 , which teaches away from the
Kumar reference” (principal Br. 17, second para.). All three Declarations
state that various mixtures of MoO2 powder and H2O2 effervesced, making
them unsuitable for use in a chemical-mechanical polishing process.
However, the Declaration evidence fails to establish that the Declarants, in
formulating a polishing slurry comprising MoO2 and H2O2, made all the
necessary adaptations that would have been obvious to one of ordinary skill
in the art to achieve a stable polishing slurry. In re Lamberti¸ 545 F.2d 747,
192 USPQ 278 (CCPA 1976); In re Weber, 405 F.2d 1403, 160 USPQ 549,
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