Ex Parte Buswell et al - Page 9

                Appeal 2007-1747                                                                             
                Application 10/061,492                                                                       

                test is what the combined teachings of the references would have suggested                   
                to those of ordinary skill in the art.”).                                                    
                      We are not convinced otherwise by Appellants’ contentions.  Allen’s                    
                teaching that any method involving a diamond saw can be used to form slot                    
                32 in semiconductor substrate 30 is sufficient instruction to one of ordinary                
                skill in this art to select any appropriate method known in the art for this                 
                purpose.  In this respect, Allen need not state a problem with slot formation                
                to direct this person to an appropriate method, and indeed, this person would                
                select a method which provides at least a reasonably formed slot with good                   
                edges for Allen’s print head.  This person would have found in Brouillette a                 
                method of forming a slot in a semiconductor substrate with good edges and                    
                would have recognized that the method in this reference would reasonably                     
                work with other such substrates as there is no teaching or suggestion in this                
                reference that the disclosed method of cutting through a semiconductor                       
                substrate with a diamond saw is limited to dicing wafers.                                    
                      Accordingly, based on our consideration of the totality of the record                  
                before us, we have weighed the evidence of obviousness found in the                          
                combined teachings of Allen and Brouillette with Appellants’ countervailing                  
                evidence of and argument for nonobviousness and conclude that the claimed                    
                invention encompassed by appealed claims 43, 46, and 47 would have been                      
                obvious as a matter of law under 35 U.S.C. § 103(a).                                         
                      The Primary Examiner’s decision is affirmed.                                           
                      No time period for taking any subsequent action in connection with                     
                this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).                        



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