Ex Parte Ise

Board of Patent Appeals and Interferences

Feb 24, 2004

09755177 (B.P.A.I. Feb. 24, 2004)

1 On page 2 of the Brief, the appellant states that "[a]n
Amendment is filed concurrently with this Appeal Brief to correct
a typographical error in claim 11 to correct dependency." The
file record for this application does not contain the afore-
mentioned amendment. However, this circumstance need not delay
or otherwise impede our disposition of the subject appeal since
the issues before us as framed by the appellant and the examiner
are unaffected by the dependency of claim 11. Nevertheless, in
any further prosecution that may occur, the appellant and the
examiner may wish to address and resolve the circumstance
involving this amendment.
-1-
The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte HIROTOSHI ISE

Appeal No. 2004-0630
Application No. 09/755,177

ON BRIEF

Before GARRIS, OWENS and DELMENDO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 7-12.1
The other claims pending in the application, which are claims 1-6
Appeal No. 2004-0630
Application No. 09/755,177
2 On page 4 of the Brief, the appellant indicates that the
appealed claims are grouped pursuant to the manner in which they
have been rejected by the examiner. Further, the appellant's
subsequent arguments regarding the appealed claims are consistent
(continued...)
-2-
and 13, stand withdrawn from further consideration by the
examiner.
The subject matter on appeal relates to a cleaning method
for removing remover solvent from a substrate which comprises the
step of introducing oxygen water into a container by way of an
inlet pipe. This appealed subject matter is adequately
represented by independent claim 7 which reads as follows:
7. A cleaning method for removing remover solvent from a
substrate to be rinsed, comprising the step of:
introducing oxygen water of high concentration into a
container by way of an oxygen-water-of-high-concentration inlet
pipe which introduces an oxygen-water-of-high-concentration, the
container retaining the substrate therein and having an inlet
port for introducing a solution into the container in a
controllable manner and an outlet port for discharging the
solution outside in a controllable manner.
The reference set forth below is relied upon by the examiner
in the § 102 and § 103 rejections before us:
Kashiwase et al. 5,378,317 Jan. 3, 1995
(Kashiwase)
Claims 7-11 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Kashiwase, and claim 12 is rejected under
35 U.S.C. § 103(a) as being unpatentable over Kashiwase.2
Appeal No. 2004-0630
Application No. 09/755,177
2(...continued)
with such a claim grouping. It follows that, in assessing the
merits of the above-noted rejections, we will focus on sole
independent claim 7 with respect to the § 102 rejection and on
claim 12 with respect to the § 103 rejection. See 37 CFR
§ 1.192(c)(7)(8) (2002).
-3-
Rather than reiterate the respective positions advocated by
the appellant and the examiner concerning these rejections, we
refer to the Brief and Reply Brief and to the Answer for a
complete exposition thereof.
OPINION
For the reasons set forth below, we will sustain each of the
rejections before us on this appeal.
Kashiwase discloses methods for removing a photoresist film
from a semiconductor substrate which involve wet (as well as dry)
processing techniques (e.g., see the Abstract). In the normal
wet method of the prior art, the semiconductor substrate or wafer
is immersed in a solution of sulfuric acid and hydrogen peroxide
for removal of the photoresist film and then is rinsed with ultra
pure water to remove any chemical solution attached on the
substrate or residue of the photoresist film (e.g., see lines 48-
68 in column 1 and lines 1-5 in column 2). In Kashiwase's
method, this normal wet method for removing photoresist film is
followed by immersing the substrate in a solution containing
Appeal No. 2004-0630
Application No. 09/755,177
-4-
ozone dissolved in ultra pure water (e.g., see lines 22-36 in
column 4 and lines 36-54 in column 5). Following this immersion,
the substrate is rinsed in ultra pure water (e.g., see lines
52-64 in column 6).
As acknowledged by the appellant (e.g., see page 10 of the
Brief), one of patentee's embodiments for his previously
described method includes the step of introducing into the
immersion or processing tank/container water having dissolved
ozone therein (e.g., see lines 34-37 in column 7). The examiner
finds that this embodiment of the Kashiwase method anticipatorily
satisfies all of the requirements of appealed independent
claim 7. According to the appellant, the examiner's finding is
erroneous for two fundamental reasons.
First, the appellant argues that the method of Kashiwase
does not involve removing remover solvent from a substrate
pursuant to the independent claim on appeal. However, patentee's
method includes removing a photoresist film with a solution
comprising sulfuric acid wherein the so-treated substrate is then
rinsed so as to remove solution and film residue from the
substrate (e.g., again see the previously cited disclosures in
columns 1, 2 and 4-7). Thus, patentee's method includes the
removal of sulfuric acid solution from his substrate. This
Appeal No. 2004-0630
Application No. 09/755,177
-5-
sulfuric acid solution corresponds to the remover solvent which
is recited in the claim under review, as revealed by the first
full paragraph on page 9 of the appellant's specification. It
follows that the argument in question is factually erroneous and
concomitantly unconvincing.
In addition, the appellant argues that the above-discussed
embodiment of Kashiwase "does not have a separate inlet port for
introducing a solution" (Brief, page 10; emphasis deleted). This
argument lacks persuasive merit in several respects.
First, the independent claim on appeal recites only a single
method step of "introducing oxygen water of high concentration
into a container by way of an oxygen-water-of-high-concentration
inlet pipe which introduces an oxygen-water-of-high-
concentration," and the appellant implicitly concedes that this
step is met by Kashiwase (e.g., again see page 10 of the Brief).
While claim 7 includes additional apparatus recitation to the
effect that the afore-quoted container has "an inlet port for
introducing a solution into the container in a controllable
manner," we do not perceive and the appellant does not explain
what if any impact this apparatus recitation has on the
previously quoted method step. See Leesoma Corp. v. U.S.,
Appeal No. 2004-0630
Application No. 09/755,177
-6-
185 USPQ 156, 165 (Ct. Cl. Trial Div. 1975), aff'd per curiam
530 F.2d 896, 192 USPQ 672 (U.S. Ct. Cl. 1976) (patentability of
a method claim must rest on method steps recited, not on
structure used, unless structure affects method steps).
Even if the apparatus recitation somehow limits the method
step, we discern no merit in the appellant's implicit contention
that the claim 7 method requires "a separate inlet port for
introducing a solution" (Brief, page 10, emphasis deleted).
Nothing in the appellant's independent claim requires that the
solution inlet port be separate from the oxygen water inlet pipe.
Similarly, the appellant points to nothing and we find nothing in
the subject specification which requires the solution inlet port
to be separate or different from the oxygen water inlet pipe.
See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989). Therefore, even when viewed in a light most generous
to the appellant, claim 7 cannot be interpreted as requiring a
separate inlet port for introducing a solution as the appellant
seems to believe. See In re Self, 671 F.2d 1344, 1348, 213 USPQ
1, 5 (CCPA 1982).
Finally, it is questionable whether the appellant's argument
would have merit even if claim 7 were limited in the fashion
urged by the appellant. This is because the solution inlet port
Appeal No. 2004-0630
Application No. 09/755,177
-7-
recited in claim 7 seemingly would correspond to Kashiwase's
ultra pure water supply pipe 36 as pointed out by the examiner
(e.g., see page 5 of the Answer). Though not explicitly required
by appealed claim 7, this pipe 36 would be used separately from
ozone-plus-water supply pipe 38 for the purpose of performing
Kashiwase's ultra pure water rinsing step (see lines 63-64 in
column 6).
Under the circumstances recounted above, it is our
determination that the reference evidence adduced by the examiner
establishes a prima facie case of anticipation with respect to
the independent claim on appeal which the appellant has failed to
successfully rebut with argument and/or evidence to the contrary.
We shall sustain, therefore, the examiner's § 102 rejection of
claims 7-11 as being anticipated by Kashiwase. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444.
Regarding the § 103 rejection of dependent claim 12, the
appellant's sole argument is that "the Examiner has not
identified all the requisite elements in Kashiwase or any other
document of record as required by 35 U.S.C. § 103" (Brief, page
11). It is not immediately apparent to us what relevance this
argument has to the obviousness issue raised by the examiner's
rejection of claim 12. This claim requires a concentration of
Appeal No. 2004-0630
Application No. 09/755,177
-8-
the aqueous hydrogen peroxide to be within a range of from 1 to
5%. According to the examiner,
[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to
have the concentration of [Kashiwase's] hydrogen
peroxide be 1 to 5% as disclosed in the claimed
invention, since it has been held that where the
general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges
involves only routine skill in the art.
(Answer, page 4). This obviousness conclusion is based on a
factual finding, which is plainly correct as previously
explained, and a legal principle, which is well settled (see
In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37
(Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215,
219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955)). Moreover, the appellant's afore-quoted
argument does not in any way contest the examiner's reliance on
this factual finding or legal principle.
Under these circumstances, we also shall sustain the
examiner's § 103 rejection of claim 12 as being unpatentable over
Kashiwase.
The decision of the examiner is affirmed.
Appeal No. 2004-0630
Application No. 09/755,177
-9-
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
BRG:clm
Appeal No. 2004-0630
Application No. 09/755,177
-10-
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