Ex Parte Endo

Board of Patent Appeals and Interferences

May 14, 2009

10132760 (B.P.A.I. May. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROKI ENDO
____________

Appeal 2009-000642
Application 10/132,760
Technology Center 1700
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Heard: April 23, 2009
Decided:1 May 14, 2009
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Before, CHUNG K. PAK, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000642
Application 10/132,760

rejection of claims 1, 3, 6, 8-10, and 12. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
Claims 1 and 3 are representative of the subject matter on appeal and
are set forth below:
1. A method for forming a resist film, comprising the following
steps of:

treating a surface of a substrate with a HMDS (hexamethyldisilazane)
process;

applying and spreading a resist liquid onto the surface after said
HMDS process is completed, said resist liquid being kept at a temperature
lower than that of the ambient atmosphere; and

thereafter baking said resist liquid.

3. A method for forming a resist film, comprising the following
steps of:

treating a surface of a substrate with a HMDS (hexamethyldisilazane)
process;

treating the substrate with a pre-wetting process using a solvent,
which can dissolve a resist liquid therein;

applying and spreading a resist liquid onto the surface after said pre-
wetting process is completed, said resist liquid being kept at a temperature
lower than the temperature of the ambient atmosphere; and

thereafter baking the resist liquid.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is (Ans. 4):

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Application 10/132,760

Takekuma 5,580,607 Dec. 03, 1996
Hasebe (hereafter Hasebe ‘615) 5,685,615 Aug. 19, 1997
Semba 6,063,439 May 16, 2000
Hasebe (hereafter Hasebe ‘561) 6,228,561 B1 May 08, 2001
Minami 6,238,109 B1 May 29, 2001
Park 6,239,859 B1 May 29, 2001
SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS
On page 2 of the Answer, the Examiner indicates that Appellant’s
statement of the grounds of rejection is substantially correct. The Examiner
changed Appellant’s statement of the grounds of rejection by listing the
following new grounds of rejection on page 3 of the Answer:
1. Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Takekuma in view
of Park or Hasebe ‘561 or Semba.
2. Claims 3 and 8-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takekuma in view of Park or Hasebe ‘561 or Semba, and
further in view of Hasebe ‘615.
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Takekuma in view of Park or Hasebe ‘561 or Semba as applied to claim
1 above, and further in view of Minami.
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Takekuma in view of Park or Hasebe ‘561or Semba, and in view of
Hasebe ‘615, as applied to claim 3 above, and further in view of Minami.

On pages 4-8 of the Answer, the Examiner also sets forth the
following grounds of rejection:
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Application 10/132,760

5. Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Takekuma.
6. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Takekuma as applied to claim 1 above, and further in view of Minami.
7. Claims 3 and 8-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takekuma in view of Hasebe ‘615.
8. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Takekuma in view of Hasebe ‘615 as applied to claim 3 above, and
further in view of Minami.
ISSUE
1. Has Appellant shown that the Examiner reversibly erred in finding
that the claimed requirement of the “resist liquid being kept at a temperature
lower than that of the ambient atmosphere” does not patentably distinguish
Appellant’s claimed subject matter from that described by the applied art?
FINDINGS OF FACT
Takekuma’s Figure 12, which is a diagram showing the relationship
between the temperature of a semiconductor wafer and the thickness of a
resist film formed on the semiconductor wafer, indicates that the temperature
of the wafer can be below ambient atmosphere, corresponding to a thickness
of the resist film. In column 10, at lines 15-16, Takekuma states that “an
appropriate temperature” is used. Also, in column 6, lines 64-65, Takekuma
states that “a predetermined temperature distribution” is created on the
wafer. Figure 1 shows a temperature range of from 18 ºC to 30 ºC.

2 Fig. 1 is discussed in col. 3, ll. 30-52 of Takekuma.
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Application 10/132,760

PRINCIPLES OF LAW
As discussed in In re Piasecki, the examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
If that burden is met, the burden of coming forward with evidence or
argument shifts to the applicant. After evidence or argument is submitted by
the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument. In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir.
1990); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985); In re Caveny,
761 F.2d 671, 674 (Fed. Cir. 1985); In re Johnson, 747 F.2d 1456, 1460
(Fed. Cir. 1984).
“[A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness." In re Peterson, 315 F.3d 1325, 1330, (Fed. Cir. 2003).
See also In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005)(claimed alloy
held obvious over prior art alloy that taught ranges of weight percentages
overlapping, and in most instances completely encompassing, claimed
ranges; furthermore, narrower ranges taught by reference overlapped all but
one range in claimed invention).
A rejection under 35 U.S.C. § 102 is proper only when the claimed
subject matter is identically disclosed or described in the prior art, without
any need for picking, choosing, and combining various disclosures. In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). Picking, choosing, and
combining various disclosures not directly related to each other by the
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teachings of the prior art may be entirely proper in the making of a § 103
rejection, not a §102 rejection. Id.

ANALYSIS
As an initial matter, for each rejection, Appellant’s argument is the
same/similar in that Appellant argues that the applied art does not disclose or
suggest his claimed feature involving the “resist liquid being kept at a
temperature lower than that of the ambient atmosphere”. Hence, the claims
stand or fall with independent claims 1 and 3 because only these claims
recite this feature.

1. The rejection of claim 1 is under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Takekuma in view of Park or Hasebe ‘561 or Semba

Beginning on page 15 of the Reply Brief, Appellant argues that the
combination of Takekuma in view of Park or Hasebe ‘561 or Semba does
not teach the claimed feature involving the “resist liquid being kept at a
temperature lower than that of the ambient atmosphere”. Appellant
discusses the teachings of Takekuma on pages 15-20 of the Reply Brief3 in
this regard. Appellant discusses the teachings of the secondary references
on pages 19-20 of the Reply Brief. With respect to the obviousness rejection
we are not convinced by these arguments for the following reasons.
Appellant presents several explanations as to why Takekuma’s
disclosure does not convey any particular relationship between the
temperature of the resist liquid being coated and the ambient temperature.

3 We refer to the Reply Brief because Appellant addresses this new ground
of rejection in the Reply Brief.
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Application 10/132,760

Br. 11-14; Reply Br. 15-20. However, contrary to this position of Appellant,
Takekuma’s Figure 14, which is a diagram showing the relationship between
the temperature of a semiconductor wafer and the thickness of a resist film
formed on the semiconductor wafer, indicates that the temperature of the
wafer can be below ambient atmosphere5, corresponding to a thickness of
the resist film. Hence, Takekuma teaches that the temperature of the wafer
has a relationship with the thickness of the resist film according to Figure 1.
In column 10, at lines 15-16, Takekuma states that “an appropriate
temperature” is used. Also, in column 6, lines 64-65, Takekuma states that
“a predetermined temperature distribution” is created on the wafer.
The fact that Takekuma teaches that the temperature can be chosen to
be below ambient, as shown in Figure 1, supports the Examiner’s
obviousness rejection. Figure 1 shows a temperature range of from 18 ºC to
30 ºC. “[A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness." In re Peterson, 315 F.3d at 1330. See also In re
Harris, 409 F.3d at 1341.
With regard to the anticipation rejection, a rejection under 35 U.S.C.
§ 102 is proper only when the claimed subject matter is identically
disclosed or described in the prior art, without any need for picking,
choosing, and combining various disclosures. In re Arkley, 455 F.2d at

4 Fig. 1 is discussed in col. 3, ll. 30-52 of Takekuma.
5 Ambient atmosphere is taken to mean room temperature, which is from 20
to 23.5 ºC, “Room Temperature”, Wikipedia,
http://en.wikipedia.org/wiki/Room_temperature (last visited May 30, 2009).
Appellant states (on page 12 of the Brief) that a temperature of 30 ºC
“exceeds conventional ambient temperatures”.
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587. Picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the prior art may be entirely
proper in the making of a § 103 rejection, not a §102 rejection. Id. In the
instant case, the Examiner has not explained how Takekuma describes use
of a temperature below ambient temperature without any need for picking
and choosing and combining various disclosures not directly related to
each other by the teachings of the cited reference.
In view of the above, we affirm the rejection of claim 1 under 35
U.S.C. § 103(a) as being obvious over Takekuma in view of Park or Hasebe
‘561 or Semba. However, we reverse the rejection of claim 1 under 35
U.S.C. § 102(b) as being anticipated by Takekuma alone or combined with
Park or Hasebe ‘561 or Semba6.
2. The Rejection of claims 3 and 8-10 under 35 U.S.C. § 103(a) as being
unpatentable over Takekuma in view of Park or Hasebe ‘561 or
Semba, and further in view of Hasebe ‘615.
Beginning on page 22 of the Reply Brief, Appellant presents the same
line of argument pertaining to the aspect of the claimed subject matter
involving the “resist liquid being kept at a temperature lower than that of the
ambient atmosphere”, as discussed in the previous rejection. With specific
regard to Hasebe ‘615, Appellant simply argues that this reference does not
overcome the alleged deficiency of Takekuma, Park, Hasebe ‘561, and
Semba.

6 This therefore includes the anticipation rejection as listed on page 3 of the
Answer and also the anticipation rejection set forth on pages 4-5 of the
Answer.
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Application 10/132,760

Hence, for the same reasons that we affirm the aforementioned
obviousness rejection, we also affirm this rejection of claims 3 and 8-10
under 35 U.S.C. § 103(a) as being unpatentable over Takekuma in view of
Park or Hasebe or Semba, and further in view of Hasebe ‘615.7
3. The Obviousness Rejections Involving the Dependent Claims
Because dependent claims 6, 8, 10, and 12 stand or fall with claims 1
and 3, we affirm the rejections involving these claims for the same reasons
that we affirmed the rejections of claims 1 and 3, discussed supra.
CONCLUSIONS OF LAW
Appellant has not shown that the Examiner reversibly erred in finding
that the claimed requirement of the “resist liquid being kept at a temperature
lower than that of the ambient atmosphere” does not patentably distinguish
Appellant’s claimed subject matter from that described by the applied art.
DECISION
1. Each of the obviousness rejections is affirmed.
2. Each of the anticipation rejections is reversed.
Accordingly, the decision of the Examiner is affirmed.

7 In so doing, we also affirm the rejection of claims 3 and 8-10 under 35
U.S.C. § 103(a) as being unpatentable over Takekuma in view of Hasebe
‘615 as set forth on pages 6-7 of the Answer.

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Appeal 2009-000642
Application 10/132,760

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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