Ex Parte Freer et al

Patent Trial and Appeal Board

Dec 5, 2012

11641362 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/641,362 12/18/2006 Erik M. Freer LAM2P581 8555
25920 7590 12/06/2012
MARTINE PENILLA GROUP, LLP
710 LAKEWAY DRIVE
SUITE 200
SUNNYVALE, CA 94085
EXAMINER
GOLIGHTLY, ERIC WAYNE
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
12/06/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte ERIK M. FREER, JOHN M. de LARIOS, MICHAEL RAVKIN,
MIKHAIL KOROLIK, KATRINA MIKHAYLICHENKO and
FRITZ C. REDEKER
____________

Appeal 2011-007055
Application 11/641,362
Technology Center 1700
____________

Before ANDREW H. METZ, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 8 through 15, 21, 22, 31 and 32, which are all the
claims remaining in the application. We have jurisdiction under 35 U.S.C. §
6.
We REVERSE.

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THE INVENTION
During the manufacture of semiconductor devices semiconductor
wafers are exposed to various types of contaminants, including particulates.
Contaminants on the surface of such wafers can render the devices within
the vicinity of the contamination inoperable. Because the size of the
contamination is often on the same order of the critical dimension of the
features on the wafer it is difficult to remove such contamination without
adversely affecting the features on the wafer. Appellants resolve this
problem by providing a stable cleaning solution that can elastically hold
solid materials in suspension. The solution comprises a continuous solution
medium including a polymeric macromolecule which forms a physical
network that give the solution a finite yield stress. When deformed with
stresses below the yield stress value the solution behaves as an elastic.
When stress above the yield stress value is applied to the solution it behaves
like a fluid. The physical network stabilizes the cleaning solution by
keeping particles suspended therein suspended when the yield stress value is
not exceeded but permits the network to act as a fluid when the yield stress
value is exceeded. The polymeric macromolecules give the solution
elasticity which provides a normal force to the wafer surface being cleaned
which promotes solid-wafer contact and better contamination removal. Sp.
[0008]. These types of solutions are generally denominated in the art as
viscoplastic fluids or “Bingham plastics.” Sp. [0024], [0027] and [0031].

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Claim 8 is adequately representative of the appealed subject matter
and is reproduced below for a more facile understanding of the claimed
invention.
8. A method for using a solution for cleaning a substrate, comprising:

providing a solution in a container, the solution being mixed from at
least a continuous medium, a polymer material, and a solid material,
the polymer material in the solution imparting a finite yield stress to
the solution, such that the solution is maintained in a stable elastic gel
form, the stable elastic gel form being configured to hold the solid
material in place and prevent the solid material from moving in the
solution and forming sedimentation if stresses less than the finite yield
stress is imparted on the solution after synthesis of the solution and
during any storage of the solution;

applying at least a minimum shear stress on the solution, the minimum
shear stress being at least greater than the finite yield stress so that the
stable elastic gel exhibits fluid-like behavior;

flowing the solution from the container after imparting the minimum
shear stress, the solution that is flown from the container has a mixed
consistency of the solid material in the solution; and

applying the solution to a preparation system for application to a
surface of the substrate.

The references of record which are being relied on by the Examiner as
evidence of obviousness are:
Woollard et al. (Woollard) US 6,042,885 Mar. 28, 2000
Boyd et al. (Boyd) US 2004/0069319 A1 Apr. 15, 2004
Montierth et al. (Montierth) US 2004/0159335 A1 Aug.19, 2004
Fine et al. (Fine) US 2004/0242442 A1 Dec. 02, 2004

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THE REJECTIONS
Claim 21 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to satisfy the “written description” requirement of the first paragraph.
Claims 8, 10 through 12, 22, 31 and 32 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would
have been obvious from the disclosure of Fine considered with Wollard.
Claims 9 and 21 stand rejected as being unpatentable under 35 U.S.C.
§ 103(a) as the claimed subject matter would have been obvious from the
disclosure of Fine considered with Wollard and Montierth.
Claims 13 through 15 stand rejected as being unpatentable under 35
U.S.C. § 103(a) as the claimed subject matter would have been obvious from
the disclosure of Fine considered with Wollard and Boyd.

OPINION
The Examiner’s rejection of claim 21 is founded on the proposition
that the subject of claim 21 is not described in Appellants’ specification in
such a way as to convey to the skilled routineer in the art that at the time the
application was filed Appellants described using the fatty acids recited in
claim 9 in a concentration which exceeds a solubility limit within the
continuous medium. Appellants direct our attention to paragraphs [0035]
and [0036] of the specification as support for the subject matter claimed in
claim 21. Specifically, Appellants urge that paragraph [0035] describes that
“aliphatic acids” and “carboxylic acids” may be used as the solid material in
the cleaning solution and that the solid material may be present at a
concentration that exceeds its solubility limit within the continuous media.
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In paragraph [0036] the exact group of fatty acids set forth in claim 9 are set
forth as being useful as the solid material. Appellants argue that the person
of ordinary skill in the art, reading said paragraphs together would have
recognized that because the fatty acids of claim 9 are described as useful
solid materials and because the solid materials are described as being present
in concentrations above the solubility limit the subject matter of claim 21 is
described in such a fashion as to evidence that Appellants were possessed of
the subject matter of claim 21 at the time Appellants filed their application.
We agree with Appellants. We find Appellants’ as-filed specification
describes in a manner that reasonably conveys to the skilled routineer that
Appellants were possessed of the subject matter of claim 21 as of the filing
date of the instant application. The Examiner’s argued position that the two
paragraphs on which Appellants rely should not be read together is
unreasonable and illogical. Paragraph [0035] describes materials useful as
the solid material in Appellants’ solution and also discloses that the solid
material should be present in a concentration that exceeds its solubility limit
within the continuous media. The following paragraph, paragraph [0036],
describes exemplary members of one of the useful groups of solid materials
described in paragraph [0035] and the group therein described corresponds
exactly to the group claimed in claim 9 on which claim 21 depends. The
Examiner’s speculation that the disclosure of useful solid materials in
paragraph [0036] is directed to a different embodiment than the discussion
of useful solid materials and their concentration in paragraph [0035] finds no
support in the record. Satisfaction of the “written description” requirement
of the first paragraph of 35 U.S.C. § 112 does not require ipsimis verbis
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support of the claimed subject matter in Appellants’ specification. Rather,
as the Examiner observes in his statement of his rejection at page 4 of his
Answer, satisfaction of the “written description” requirement requires
description of the invention claimed in such a way as to reasonably convey
to one skilled in the relevant art that the inventors had possession of the
claimed subject matter at the time Appellants filed their invention. This,
Appellants have done. Accordingly, we reverse the examiner’s rejection of
claim 21 under 35 U.S.C. §112, first paragraph.
Each of the Examiner’s three rejections of the claims based on the
prior art is founded on the same two references: Fine and Woollard. In
addition to Fine and Woollard, the rejection of the subject matter of claims 9
and 21 also relies on Montierth and the rejection of the subject matter of
claims 13 through 15 further relies on Boyd. For reasons which follow, we
find the Examiner has failed to make out a prima facie case of obviousness
with respect to the claimed subject matter.
Fine is directed to “heterogeneous cleaning compositions.” The
compositions therein disclosed may include “active cleaning ingredients”,
“active conditioning ingredients”, “surfactant[s]”, “sequestrant[s]”, “active
enzyme[s]”, “source[s] of alkalinity”, “antiredeposition agent[s]” and
“optical brightener[s].” [0006]. The heterogeneous cleaning compositions
can be in the form of a paste, powder, multi-phase liquid or gel. [0026] The
therein disclosed compositions can be used for effective laundering by
adding them to a washing machine. [0028]. Even after aging, the
heterogeneous compositions at least partially leave an opened and inverted
container under the force of gravity. [0029]. Fine includes an encyclopedic
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disclosure of additives useful for formulating their heterogeneous
compositions. [0034] through [0177]. After packaging, the heterogeneous
compositions can separate, precipitate, gel or solidify in the package.
[0185]. The heterogeneous compositions may be used in a broad variety of
institutional hospitality, foodservice and healthcare industries and include
textile or laundry cleaning. [0198]. Testing of the disclosed compositions
was conducted by laundering soiled fabric swatches. [0201] through [0216].
Woollard is directed to a method for dispensing a gel onto a surface.
Specifically, Woollard is directed to coating release agents in the form of a
gel to the surface of a vessel used in commercial baking. Woollard’s
invention is said to be an improvement over conventional prior art methods
using an atomizing nozzle under air pressure to spray a release agent on the
surface of baking apparatus. Woollard achieves their improvement by
delivering a gel through a distributor onto a rotating hub and the gel is
thereafter dispensed from the rotating hub.
In the first instance, the Examiner has failed to explain where Fine
describes or suggests the limitation from claim 8 requiring a particular
solution maintained in a stable elastic gel form and prepared from particular
ingredients and having a finite yield stress. I ndeed, the Examiner recognizes
this deficiency in Fine on page 6 of his Answer. Nothing in paragraph
[0029] to which the Examiner has directed our attention describes or
suggests a viscoelastic gel as required by Appellants’ claim 8. While Fine
does utilize the word “gel” in its disclosure, how that gel is formed or what
the properties of the gel might be is nowhere disclosed. There is no
disclosure or discussion in Fine of the finite yield stress of the “gel” therein
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disclosed or that the “gel” would flow when “a minimum shear stress” above
the finite yield stress is applied to the solution. The Examiner’s conclusion
that these claim limitations are inherently met because “Fine discloses the
same steps as those taught in the claims” is not supported by evidence of
record. In particular, the Examiner has not identified evidence that merely
“providing a solution in a container” would have been expected to yield the
specific solution required by the claims and the Examiner has failed to set
forth any reasonable explanation that supports his theory.
Additionally, the Examiner has failed to explain why the routineer
interested in cleaning the surface of wafers useful for preparing
semiconductor devices would have been motivated to use the heterogeneous
detergent compositions of Fine, useful for laundering fabric or textiles, to
clean the surfaces semiconductor wafers.
The Examiner’s reliance on Woollard in combination with Fine does
not overcome the deficiencies noted above in the Examiner’s reliance on
Fine. In the first instance, the nature of the “gel” used by Woollard is not set
forth. The “gel” in Woollard is used as a lubricant for bakery apparatus to
aid in the release of dough from various bakery equipment not as a cleaning
solution as required by the appealed claims. Suffice it to say Woollard does
not disclose or suggest using a viscoelastic gel for lubricating bakery
equipment. The Examiner has failed to explain what would have motivated
the skilled routineer to look to the art of lubricating bakery machinery for the
purpose of devising a suitable composition for cleaning the surface of a
substrate, such as employed in semiconductor devices, or why the routineer
would have combined the disclosure of Woollard with the disclosure in Fine
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of useful laundry detergent compositions. Accordingly, we reverse the
rejection of claims 8, 10 through 12, 22, 31 and 32 under 35 U.S.C. §103(a).
Because all of the Examiner’s rejections based on the prior art rely on
Fine considered with Woollard and because we have found that combination
does not raise a prima facie case of obviousness with respect to the claims
on which claims 9 and 21 depend and on which claims 13 through 15 also
depend, we reverse the rejection of claims 9 and 21 and of claims 13 through
15 under 35 U.S.C. §103.
The decision of the Examiner is reversed.
REVERSED

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