Appeal 2007-1747
Application 10/061,492
We agree with the Examiner that, prima facie, one of ordinary skill in
the art following the teachings of Allen would have considered appropriate
methods known in the art using diamond saws to cut semiconductor
substrates to form slot 32 in semiconductor substrate 30. We further agree
with the Examiner that this person would have combined Allen and
Brouillette on the basis that Brouillette also forms slots in semiconductor
substrates with diamond saws, and in following the combined teachings of
the references, would thence have formed slot 32 of Allen by partially
cutting through Allen’s substrate 30 with a diamond saw from each surface
following Brouillette’s method in the reasonable expectation of obtaining a
slot with strong, clean edges. The edge of the slot would have a portion
prepared by a cut from each surface, and the two portions meet at an angle.
Accordingly, one of ordinary skill in this art routinely following the
combined teachings of Allen and Brouillette would have reasonably arrived
at the claimed method of forming a slot encompassed by claim 43, including
each and every element thereof arranged as required therein, without
recourse to Appellants’ specification. See KSR Int’l v. Teleflex Inc.,
127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1397 (2007) (“When there is a
design need . . . to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.”); see also,
e.g., In re Kahn, 441 F.3d 977, 985-88, 78 USPQ2d 1329, 1334-37 (Fed.
Cir. 2006); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981) (“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013