Ex parte Doran

Board of Patent Appeals and Interferences

Jul 27, 1999

08026669 (B.P.A.I. Jul. 27, 1999)

Application for patent filed March 5, 1993.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DANIEL B. DORAN
________________
Appeal No. 96-2261
Application 08/026,6691
________________
ON BRIEF
________________
Before GARRIS, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 17-31 and refusal to allow claim 32 which was added
after final rejection.
Appeal No. 96-2261
Application 08/026,669
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THE INVENTION
Appellant’s claimed invention is directed toward an
automated method for washing objects wherein the objects are
exposed to ultraviolet radiation, resist developer and a
surfactant solution. Appellant states that the method is
capable of removing resist flakes from semiconductor wafer
cassettes and carriers without the use of solvents
(specification, page 1). Claim 32 is illustrative and reads
as follows:
32. A method for automated washing of objects,
comprising
the following steps:
(a) placing the objects to be washed in a chamber;
(b) exposing the objects to ultraviolet radiation;
(c) applying resist developer fluid to the objects;
(d) rinsing the resist developer;
(e) applying surfactant solution to the objects;
(f) rinsing the surfactant solution from the objects;
and
blowing air into the chamber to dry the objects.
THE REFERENCES
Bardina et al. (Bardina) 4,560,417 Dec. 24, 1985
Appeal No. 96-2261
Application 08/026,669
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Tomisawa et al. (Tomisawa) 4,517,282 May 14, 1985
Cherry et al. (Cherry) 4,832,753 May 23, 1989
L. Solymar and D. Walsh (Solymar), Lectures on the Electrical
Properties of Materials 248-51 (Oxford University Press 1990).
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 17-21, 23, 25-27, 29, 30 and 32 over Bardina
in view of Solymar; claims 22 and 31 over Bardina in view of
Solymar and Cherry; and claims 24 and 28 over Bardina and
Solymar in view of Tomisawa.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, we do not sustain these rejections.
We need to discuss only appellant’s broadest claim, which
is claim 32.
Bardina discloses an automated method for decontaminating
semiconductor wafer handling equipment wherein the equipment
is sprayed with a mixture of detergent and deionized water and
Appeal No. 96-2261
Application 08/026,669
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then is rinsed and dried (col. 1, lines 12-13; col. 5, line 47
- col. 6, line 41; col. 7, line 56 - col. 8, line 10).
Bardina does not disclose the steps recited in
appellant’s claim 32 of exposing the objects to ultraviolet
radiation, applying resist developer fluid to the objects, and
rinsing the resist developer. For a teaching of these
features, the examiner relies upon Solymar. This reference
discusses the stages in the production of microelectronic
circuits. In one stage, a photoresist is applied on an oxide
layer, a mask is placed over the photoresist, and the
photoresist is exposed to ultraviolet light through
transparent areas in the mask (pages 249-51; figure 9.51(b)).
Solymar teaches that photoresists are organic compounds whose
solubility is affected by exposure to ultraviolet light, and
that the exposed areas of a positive photoresist, which he
uses, can be washed away by a suitable developer (page 249).
Appellant argues that Solymar does not disclose or
suggest a cleaning method in which ultraviolet light and
developer wash are used (brief, page 7). In appellant’s view,
only appellant’s specification, not the applied references,
provides the idea of such a method (brief, page 8).
Appeal No. 96-2261
Application 08/026,669
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The examiner argues (final rejection, paper no. 9, mailed
February 13, 1995, page 3):
It would have been obvious to a person skilled in
the art at the time the invention was made to expose
the objects to be cleaned to ultraviolet light and a
spray of resist developer fluid because this is a
well known method of removing positive photoresists
from substrates. After all, resist/developer
systems are designed to do this.
The examiner’s argument is not well taken because the
examiner has not explained, and it is not apparent, why the
use of ultraviolet light exposure and resist developer to form
microcircuits would have fairly suggested, to one of ordinary
skill in the art, use of ultraviolet light exposure and resist
developer for cleaning Bardina’s wafer handling equipment. In
order for a prima facie case of obviousness to be established,
the teachings from the prior art itself must appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
143, 147 (CCPA 1976). The mere fact that the prior art could
be modified as proposed by the examiner is not sufficient to
establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
Appeal No. 96-2261
Application 08/026,669
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1992).
The motivation relied upon by the examiner for combining
the references comes solely from the description of
appellant’s invention in his specification. Thus, the
examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960).
The steps of exposure to ultraviolet light and applying
resist developer are included in all of appellant’s
independent claims. Accordingly, for the above reasons, we do
not sustain the examiner’s rejection of any of the claims.
DECISION
The rejections under 35 U.S.C. § 103 of claims 17-21, 23,
25-27, 29, 30 and 32 over Bardina in view of Solymar, claims
22 and 31 over Bardina in view of Solymar and Cherry, and
claims 24 and 28 over Bardina and Solymar in view of Tomisawa,
Appeal No. 96-2261
Application 08/026,669
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are reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-2261
Application 08/026,669
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Wayne P. Bailey
Symbois Logic Inc.
2001 Danfield Court, Mail Stop E
Fort Collins, CO 80525
TJO/ki