Ex Parte BabicDownload PDFBoard of Patent Appeals and InterferencesFeb 1, 201111022563 (B.P.A.I. Feb. 1, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte DARKO BABIC ______________ Appeal 2009-009083 Application 11/022,563 Technology Center 1700 _______________ Before CHARLES F. WARREN, TERRY J. OWENS, and MARK NAGUMO, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL1 Applicant appeals to the Board from the decision of the Primary Examiner finally rejecting claims 13-22 in the Office Action mailed December 12, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2007). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009083 Application 11/022,563 We affirm the decision of the Primary Examiner. Claim 13 illustrates Appellant’s invention of an internal member of a system for processing a substrate with a supercritical fluid, and is representative of the claims on appeal:2 13. An internal member of a system for processing a substrate with a supercritical fluid comprising: a structural element configured to be coupled to a supercritical fluid processing system for processing a wafer at a high processing pressure that is at least as high as the pressures encountered in supercritical fluid processing in the supercritical fluid processing system; a coating coupled to one or more surfaces of said structural element, wherein said coating exists under compressive stresses at atmospheric pressure and exists under stresses that are less compressive and free of tensile stresses at said high processing pressure. Appellant requests review of the ground of rejection under 35 U.S.C. § 103(a) advanced on appeal by the Examiner: claims 13-22 over Biberger (US 2003/0136514 A1) and Bergman (US 6,286,231 B1). App. Br. 5; Ans. 3.3 Appellant argues the claims in the first ground of rejection as a group; on claims 13-15 and 21 as a group; and on claims 16, 17, 19, 20, 21, and 22, individually. App. Br. 6-10. Thus, we decide this appeal based on claims 13, 16, 17, and 19-22. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 2 We have copied claim 13 as it stands of record in the Amendment filed June 16, 2008, entered in the Office communication mailed March 5, 2009. 3 The Examiner also advanced the provisional rejection of claims 13-22 under the judicially created doctrine of obviousness-type double patenting over claims 1-22 of copending Application No. 10/955,927. The electronic records of the USPTO show that Application No. 10/955,927 is abandoned, and thus this ground of rejection is moot. 2 Appeal 2009-009083 Application 11/022,563 Opinion I. Appellant submits the Examiner erred in concluding that the combined teachings of Biberger and Bergman would have rendered the claimed internal member of a system for processing a substrate with a supercritical fluid encompassed by independent claim 13, a high pressure processing system for treating a substrate encompassed by independent claim 17, as further limited by dependent claims 16 and 19-22, obvious to one of ordinary skill in the art. App. Br. 6-8 and 9-10. Appellant’s principal argument is that neither Bilberger nor Bergman meets the limitation common to “claims 13 and 17, that a coating coupled to one or more surfaces in a system for processing a substrate with a supercritical fluid exists under compressive stresses at atmospheric pressure and exists under stresses that are less compressive and free of tensile stresses at the high processing pressure encountered in supercritical fluid processing.” App. Br. 6-7; see also App. Br. 9. See representative claim 13. According to Appellant, “the Examiner simply makes the unsupported assertion that ‘[Bergman’s specific coatings] will exist under compressive stresses at atmospheric pressure and exists under stresses that are less compressive and free of tensile stresses at said high processing pressure which is as high as the pressure encountered in supercritical fluid processing,’” when used in Biberger’s supercritical carbon dioxide processing system. App. Br. 7. Appellant further contends that the Examiner’s position contradicts the Examiner’s statement “with respect to dependent claim 22, that ‘[a]ll the internal member [sic] are obviously 3 Appeal 2009-009083 Application 11/022,563 substantially stress-free at standard or atmospheric pressure and will have a tendency to develop tensile stress.’” App. Br. 7; see also App. Br. 9. See Ans. 14. Appellant states that high pressures are “encountered in supercritical fluid processing in the supercritical fluid processing system,” wherein “[t]his pressure is, for example, 1070 Psi when the fluid is supercritical carbon dioxide, a common fluid used in removing photoresist in semiconductor wafer processing.” App. Br. 7. Appellant takes the same position with respect to dependent claims 16 and 19-21. App. Br. 8 and 10. II. The Examiner finds that Bilberger would have disclosed to one of ordinary skill in the art a system for processing a wafer substrate with a supercritical fluid containing carbon dioxide in a solvent wherein the pressure chamber is at about 1,100 to 1,200 psi, and wherein the critical pressure of the carbon dioxide is 1,070 psi. Ans. 3, citing Biberger ¶¶ 0048 and 0051-0053, and Fig. 5. The Examiner finds that Bergman would have disclosed to one of ordinary skill in the art an apparatus for high-pressure wafer processing and drying which includes vessel 302 that can operate at a pressure between 10 atmospheres, that is, 147 psi, and 100 atmospheres, that is, 1,470 psi. Ans. 4, citing Bergman col. 11, ll. 14-26. The Examiner finds Bergman would have disclosed coating the surfaces of vessel 302, which contact liquids or gas, with a non-reactive substance such as a polytetrafluoro-ethylene polymer or quartz, which is silicon dioxide that is a ceramic material. Ans. 4-5. On this basis, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to coat the surfaces of Biberger’s apparatus with Bergman’s coating to yield the 4 Appeal 2009-009083 Application 11/022,563 predictable result of coating the surfaces to protect apparatus components. Ans. 5-6. In this respect, the Examiner finds that Bergman’s coatings are encompassed by claim 15. The Examiner further finds that since the claimed coatings encompassed by the appealed claims and those of Bergman are the same and are used in the same kind of processing apparatus that operates at the same supercritical process conditions of high pressure, then it reasonably appears that the claimed coatings and those of Bergman exhibit the claimed properties specified as the “coating exists under compressive stresses at atmospheric pressure and exists under stresses that are less compressive and free of tensile stresses at said high processing pressure” Ans. 5; see also Ans. 11-19. With respect to claim 22, the Examiner points out that internal members of any processing system are substantially stress- free at standard or atmospheric pressure and will develop tensile stress when subjected to high processing pressure which is higher than atmospheric pressure, that is, 14.7 psi. Ans. 14 III. We agree with, and Appellant does not dispute, the Examiner’s findings from Biberger and Bergman. We add the following for emphasis. Bergman would have disclosed to one of ordinary skill in the art that vessel 302 is part of a high pressure wafer processing system that can be used for processing wafers, including providing a supercritical substance within the vessel wherein the supercritical substance is, among other things, carbon dioxide. Bergman, e.g., col. 9. l. 29 to col. 11, l. 26, and Figs, 7A-B. Bergman would have further disclosed that in this context, vessel 302 can 5 Appeal 2009-009083 Application 11/022,563 operate at a pressure between 10 and 100 atmospheres, can be constructed of “a structural material such as stainless steel that is suitably strong to contain these elevated temperatures,” and that the surfaces thereof contacting the liquids and gases should be coated with non-reactive substances, including polymers such as polytetrafluoroethylene and quartz. Bergman, col. 11, ll. 14-26. With respect to dependent claim 22, we find that Appellant discloses that the claimed “internal member” can be “commonly fabricated from stainless steel,” which is the same material for vessel 302 taught by Bergman. Spec. ¶ 0054. III. On this record, we agree with the Examiner’s position. Indeed, the Examiner has established that it reasonably appears that the claimed coatings on one or more surfaces of components of systems for processing a substrate with a supercritical fluid that exhibit the claimed properties encompassed by claims 13, 16, 17, and 19-22, are identical or substantially identical to the same coatings on one or more surfaces of the same material of components of systems for processing a substrate with a supercritical fluid taught by the combined teachings of Biberger and Bergman, even though the references do not specifically disclose the properties of the coatings specified in the claims. Indeed, with respect to dependent claim 22, we found that Appellant discloses that the surfaces of the “internal member” can be stainless steel which is the same material disclosed by Bergman for vessel 302. Thus, the burden is with Appellant to patentably distinguish the claimed systems for processing a substrate with a supercritical fluid over the systems for 6 Appeal 2009-009083 Application 11/022,563 processing a substrate with a supercritical fluid of the combined teachings of Biberger and Bergman even thought the ground of rejection is under § 103(a). See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977);4 In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have chosen to describe their invention in terms of certain physical characteristics . . . . Merely choosing to describe their invention in this manner does not render patentable their method which is clearly obvious in view of [the reference].” (citation omitted)); see also, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). 4 Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. Best, 562 F.2d at 1255 (footnote and citations omitted). 7 Appeal 2009-009083 Application 11/022,563 On this record, Appellant has not carried the burden. Appellant has not submitted evidence or argument establishing that the claimed non- reactive coatings on stainless steel surfaces of a high pressure wafer processing system which employs a supercritical fluid is patentably different from the same coatings on the same surfaces of the same or similar processing system taught by Bergman. Indeed, the elucidation of properties of such coatings not disclosed in the prior art does not patentably distinguish the claimed systems over the prior art even though one of ordinary skill in the art routinely following the teachings of Bergman may not have appreciated the properties. See, e.g., Skoner, 517 F.2d at 950-5; cf., e.g., Spada, 911 F.2d at 707; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775, 782-83 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (“[I]t is . . . irrelevant that those using the invention may not have appreciated the results[,] . . . [otherwise] it would be possible to obtain a patent for an old and unchanged process.” (citations omitted)). IV. 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 Biberger and Bergman with Appellant’s countervailing evidence of and argument for nonobviousness and conclude, by a preponderance of the evidence and weight of argument, that the claimed invention encompassed by appealed claims 13-22 would have been obvious as a matter of law under 35 U.S.C. § 103(a). The Primary Examiner’s decision is affirmed. 8 Appeal 2009-009083 Application 11/022,563 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). 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