Ex Parte Babic

Board of Patent Appeals and Interferences

Feb 1, 2011

11022563 (B.P.A.I. Feb. 1, 2011)

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.
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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
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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
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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
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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
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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).
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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.
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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).
AFFIRMED

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