Ex Parte Chen et al

Patent Trial and Appeal Board

Oct 24, 2012

11194036 (P.T.A.B. Oct. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHIEN-HUA CHEN, CHARLES C. HALUZAK
and TRACY B. FORREST
____________________

Appeal 2010-005342
Application 11/194,036
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, BRYAN F. MOORE and
JOHN G. NEW, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005342
Application 11/194,036

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-11. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method for bonding a first precleaned surface to a
second precleaned surface comprising:
plasma treating the first surface and the second surface;
after plasma treating the first surface and the second surface,
wet treating only the first surface; and,
after wet treating only the first surface, joining the first surface
and the second surface together to bond the first surface to the second
surface.

Rejections on Appeal
1

1. The Examiner rejected claims 1-11 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Gosele (“Sensors and Actuators”
74 (1999) p.162) and Plobl (“Materials Science and Engineering” R25
(1999) p.7).
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a), because (emphasis omitted):
[I]n the claimed invention, the first and the second
surfaces are precleaned prior to the performance of the method.

1
Separate patentability is not argued for claims 2-11. Except for our
ultimate decision, the Examiner’s rejections of these claims are not
discussed further herein.
Appeal 2010-005342
Application 11/194,036

3
The excerpt of Plobl on page 7 is specifically in relation to how
such precleaning can be performed prior to bonding, as noted
above, and not how wet treatment is performed as a part of a
method for actually bonding the two already precleaned
surfaces together, in contradistinction to the claimed invention.
Not until page 28 of Plobl does this reference describe how
bonding is performed (e.g., "[i]n this chapter the actual bonding
of different silicon surfaces is described").
(App. Br. 4).
2. Appellants also contend that the Examiner erred because
(emphasis added):
The Examiner has made the argument that even though
Gosele in combination with Plobl does not suggest wet treating
only the first surface, it would be obvious to do so, because
Plobl notes that using SC 1 is aggressive, and therefore it would
have been obvious to wet treat only one of the surfaces so as
not to expose both surfaces to the aggressive nature of the
solution (see final office action, top of p. 3). However, it is
readily apparent that Plobl teaches away from such an
interpretation.
(App. Br. 5). Appellants further state:
That is to say, it would not have been obvious to wet
treat/preclean just one of the surfaces in Gosele in view of
Plobl, because Plobl explicitly says that wafer bonding requires
surfaces that are free of contaminants, and if you just wet
treat/preclean one surface, that means the other surface still may
have contaminants. Plobl in fact suggests the solution to this
conundrum, that "[w]hen bonding other materials cleaning
methods compatible with these materials have to be adopted,
always keeping in mind that contaminants have to be removed
without degrading the surface" (p. 6, sec. 3.2).
(App. Br. 5).
3. Appellants also contend that the Examiner erred because they
have discovered the source of a problem in the art. (App. Br. 6).
Appeal 2010-005342
Application 11/194,036

4
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the references fail to teach or suggest the argued limitations?
Did the Examiner err in rejecting claim 1 as being obvious because
the Plobl reference teaches away from the claimed method?
Did the Examiner err in rejecting claim 1 as being obvious because
Appellants have discovered the source of a problem in the art?

ANALYSIS
We agree with the Appellants’ above contention 1. We agree that the
Examiner erred as the combination of Gosele and Plobl are not sufficient to
show that claim 1 is unpatentable without an additional teaching. We now
provide that additional teaching. The “Background” of Appellants’
Specification explicitly states it is known that:
In semiconductor processing, it is common to have to
bond two surfaces together, such as two semiconductor wafer
surfaces. Some bonding approaches employ an intermediate
layer, such as cement, solder, and so on, applied between the
surfaces to bond them together, whereas other bonding
approaches do not use any type of adhesive. For the latter
bonding approaches, typically the surfaces are treated in some
way so that joining them together results in the surfaces being
bonded.
In the latter approach, the surfaces are plasma treated,
and then both surfaces are wet treated, prior to joining them
together. However, some types of surfaces are not amenable to
being wet treated. For instance, micro electromechanical
system (MEMS) devices can be damaged if subjected to a wet
treatment, suffering stiction, contamination problems, as well
as possible destruction to fragile components, can occur. More
generally, devices containing metals, etched features, or
Appeal 2010-005342
Application 11/194,036

5
mechanically fragile structures may not be able to be subjected
to a wet treatment.
(Spec. 1:10-22) (emphases added). Appellants’ Background admits that the
entirety of claim 1 is known in the art except for the limitation “wet treating
only the first surface” (emphasis added). Appellants’ Background goes on
to admit artisans know that some surfaces are not amenable to wet treatment.
We conclude that it is within the skill of the art to not treat a fragile surface
in a way that is known will damage that surface. Our analysis of Appellants’
Admitted Prior Art overcomes the argued deficiency of the Examiner’s
rejection based on only Gosele and Plobl. We designate our analysis in
combination with the Examiner’s remaining analysis to be a new ground of
rejection under 35 U.S.C. § 103(a) over the combination of Appellants’
Admitted Prior Art, Gosele, and Plobl.
As to Appellants’ above contention 2, we disagree. Appellants’
contention relies on citations to portions of Plobl that we do not find in the
record before this Board.
As to Appellants’ above contention 3, we disagree. According to
Appellants’ Background the problem was already known in the art.

37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal 2010-005342
Application 11/194,036

6
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-11 as being unpatentable under 35 U.S.C. § 103(a) over the
combination of Gosele and Plobl.
(2) Claims 1-11 are not patentable.

DECISION
The Examiner’s rejections of claims 1-11 are reversed.

REVERSED
37 C.F.R. § 41.50(b)

ELD