Ex Parte Kabasawa et al

Patent Trials and Appeals Board

Mar 25, 2019

13989605 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/989,605 05/24/2013
25944 7590 03/27/2019
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Hitoshi Kabasawa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
157705 2029
EXAMINER
CAMPBELL, NATASHA N.
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
03/27/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI KABASA WA
and TATSUO ABE
Appeal2018-003858
Application 13/989,605
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1 and 2 of Application 13/989,605
under 35 U.S.C. § 103(a) as obvious. Non-Final Act. 3 (May 23, 2017).
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek reversal of this rejection.
Because at least one of the appealed claims has been twice rejected, we have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Shin-Etsu Handotai Co. is identified as the real party in interest. Appeal
Br. 1.
Appeal2018-003858
Application 13/989,605
BACKGROUND
The '605 Application describes a method for cleaning a
semiconductor wafer that reduces roughening of the wafer's surface. Spec.
,r 8. Claim 1 is representative of the '605 Application's claims and is
reproduced below from the Claims Appendix ( emphasis added):
1. A method for cleaning a silicon wafer which comprises
the steps of
cleaning the silicon wafer with a SCI cleaning solution,
the silicon wafer that is to be cleaned is a silicon wafer after
mirror-polishing,
removing an oxide film formed during the SC 1 cleaning
step by cleaning the silicon wafer cleaned by the SCI cleaning
solution with hydrofluoric acid, and
cleaning the silicon wafer cleaned by the hydrofluoric
acid with ozonated water having an ozone concentration of 3
ppm or more,
wherein the cleaning of the silicon wafer with the SCI
cleaning solution is conducted under the range of the
temperature of the SCI cleaning solution being 25°C to 65°C,
and the time of 180 to 3 60 seconds, and
an etching removal of the silicon wafer with the SCI
cleaning solution is made 0.1 to 2. 0 nm.
Claims App. A-1.
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Application 13/989,605
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1 and 2 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Nishihata, 2 Williams, Jr., 3
and Soeta. 4 Non-Final Act. 3.
DISCUSSION
Appellants argue for the reversal of the obviousness rejection to all of
the appealed claims on the basis of limitations present in independent claim
I. See Appeal Br. 4--16; see also Reply Br. 2-12. We select claim 1 as
representative. Claim 2 will stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner found, inter alia, that Nishihata
describes the claimed steps of successively cleaning a silicon wafer with
SCI cleaning solution, hydrofluoric acid, and ozonated water. Non-Final
Act. 3 ( citing Nishihata ,r 51 ).
The Examiner further found that Nishihata does not disclose the
requisite amount of silicon wafer that is removed by the SC 1 cleaning
solution's etching action. Non-Final Act. 4. According to the Examiner,
Nishihata is also silent regarding the required cleaning temperature for the
SCI cleaning solution. Id. The Examiner found, however, that Nishihata's
silence "is reasonably interpreted as cleaning at room temperature, [ which
is] understood to be around 25 °C," and that "Nishihata teaches an SCI
2 US 2006/0234461 Al, published Oct. 19, 2006.
3 US 2005/0205930 Al, published Sept. 22, 2005.
4 US 2009/0117706 Al, published May 7, 2009.
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Appeal2018-003858
Application 13/989,605
cleaning time of five minutes." Id. (citing Nishihata ,r 57). The Examiner
thus concluded that
both the cleaning duration and temperature are within the
claimed ranges. The conditions of the SC 1 cleaning in the prior
art are the same conditions to which applicant attributes the
result of an etching removal of the silicon wafer being made O .1
to 2.0 nm. Thus, when performing the prior art method, one of
ordinary skill in the art would reasonably expect to yield the
etching removal within the claimed range.
Non-Final Act. 4.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner reversibly erred in concluding that the combination of
Nishihata, Williams, Jr., and Soeta would have rendered claim 1 obvious.
Appeal Br. 4. In particular, Appellants argue that: (1) Nishihata "only
discloses one- or two-part cleaning methods without the ordered
combination of cleaning with SC 1 cleaning solution, hydrofluoric acid, and
ozonated water," id.; see also id. at 5-8, Reply Br. 5-7; (2) Nishihata fails to
disclose or suggest the recited temperature range because "those of ordinary
skill in the art would not consider room temperature as 'around 25°C,' but
rather a temperature that is below the recited 25°C to 65°C range ( e.g.,
20°C)," Appeal Br. 4, see also id. at 8-9, Reply Br. 7-9; (3) the claimed
etching removal range is not an inherent feature ofNishihata, Appeal Br. 9-
12, Reply Br. 9-10; and (4) Appellants have provided probative evidence of
unexpected results, which sufficiently rebuts any established prima facie
obviousness. Appeal Br. 13-14; Reply Br. 10-12.
Appellants' arguments are not persuasive.
First, we are not persuaded by argument (1) because we discern no
reversible error in the Examiner's finding that Nishihata teaches the
successive cleaning steps.
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Appeal2018-003858
Application 13/989,605
Nishihata explicitly discloses that, "[a]s the cleaning method, one of
or a combination of two or more of SC-1 cleaning, SC- I cleaning+SC-2
cleaning, HF/03 cleaning, and HF cleaning+03 cleaning can be employed."
Nishihata ,r 42 ( emphasis added); see also Answer 6. Nishihata,
furthermore, teaches that 03 cleaning should follow the suggested
combinations of cleaning method steps. Nishihata ,r 51 ( disclosing that, "as
for 03 cleaning, it is effective to perform successively after SC- I cleaning
and HF cleaning."); see also Answer 6; In re Fritch, 972 F.2d 1260, 1264
(Fed. Cir. 1992) ("It is well settled that a prior art reference is relevant for all
that it teaches to those of ordinary skill in the art.").
Second, we are not persuaded by argument (2) that Nishihata fails to
disclose or suggest the recited temperature range.
As the Examiner found, "the Salters Advanced Chemistry textbook
Chemical Ideas- Second Edition establishes room temperature at around
25°C." Answer 7. A review of various references further demonstrates that
the ordinarily skilled artisan would have considered room temperature as
encompassing 25°C. See, e.g., room temperature definition in the
Dictionary of Materials and Testing, 2nd edition (SAE International 2000),
(defining room temperature as "[a] temperature in the range of 20 to 30°C
(68 to 86°F)."); Room temperature definition in Simple English, Wikipedia
(March 11, 2019),
https:// simple. wikipedia.org/wiki/Room_temperature#Science ("For
scientific work, room temperature is taken to be about 20 to 25
degrees Celsius .... ").
Thus, Appellants' arguments have not identified reversible error in the
Examiner's findings that one of ordinary skill in the art would have
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Appeal2018-003858
Application 13/989,605
reasonably interpreted Nishihata's cleaning at room temperature to be
around 25°C.
Third, Appellants assert in connection with argument (3) that
Nishihata cannot disclose the recited SC 1 cleaning conditions because
"Nishihata does not provide any teachings that suggest that its SC- I cleaning
is performed on a silicon substrate after mirror-polishing," as required by
claim 1. Appeal Br. 10.
The Examiner, however, relies on Williams, Jr. for teaching mirror
polishing wafer surfaces before subjecting the wafer to ion implantation,
bonding, and cleaning. Non-Final Act. 3 (citing Williams, Jr. ,r 80). As the
Examiner determined, "it would have been obvious to one of ordinary skill
in the art at the time of the invention to modify [Nishihata's] method ... to
provide [Williams, Jr.' s] mirror-polished wafer as the substrate to be cleaned
... in order to prepare the wafer for subsequent processing." Non-Final
Act. 3.
Appellants' argument is thus directed to attacking the individual
primary reference rather than the combined teaching of the references. In
this case, Appellants have not identified any particular claim limitation that
is neither described nor suggested in the cited references. Appellants'
criticism ofNishihata, therefore, does not establish nonobviousness. See In
re Keller, 642 F.2d 413 (CCPA 1981); In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971) ("[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.").
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Appeal2018-003858
Application 13/989,605
Appellants further argue in connection with argument (3) that the
recited etching removal range does not necessarily flow from Nishihata's
teachings. Appeal Br. 11-12.
It is, however, well established that when claimed and prior art
products are produced by identical or substantially identical processes, the
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
In re Best, 562 F.2d 1252, 1256 (CCPA 1977). Appellants have not met this
burden. The record is silent as to any persuasive technical reasoning or
evidence demonstrating that Nishihata's modified SCI cleaning at room
temperature for 5 minutes, followed by the suggested successive cleaning
with hydrofluoric acid and ozonated water, would not have resulted in the
etching removal of 0.1 to 2.0 nm from a silicon wafer. Rather, we agree
with the Examiner that the ordinarily skilled artisan would reasonably expect
that Nishihata's modified method would have yielded the etching removal
within the claimed range. Non-Final Act. 4.
Fourth, we are not persuaded by argument ( 4) because Appellants do
not provide probative evidence of unexpected results to rebut the Examiner's
prima facie obviousness.
To establish the existence of unexpected results, Appellants must
establish (1) that there actually is a difference between the results obtained
through the claimed invention and those of the closest prior art and (2) that
the difference actually obtained would not have been expected by a person
of ordinary skill in the art at the time of the invention. In re Freeman, 4 7 4
F.2d 1318, 1324 (CCPA 1973) (citing In re Klosak, 455 F.2d 1077 (CCPA
1972); In re D'Ancicco, 439 F.2d 1244 (CCPA 1971)).
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Appeal2018-003858
Application 13/989,605
In this case, Appellants direct our attention to the Comparative
Examples provided in the Specification and the Declaration of named
inventor Hitoshi Kabasawa under 37 C.F.R. § 1.132 ("Kabasawa
Declaration"). See Appeal Br. 13-16; see also Spec. ,r,r 24--32, Figs. 2, 3;
Kabasawa Declaration ,r,r 9-14. As Appellants admit, however, the
Comparative Examples "are closer to the claimed cleaning method than
Nishihata." Appeal Br. 14, fn.3. Absent any comparison with Nishihata's
SC 1 cleaning at room temperature for 5 minutes (Nishihata ,r,r 51, 57),
Appellants cannot show an actual difference between the results obtained
through the claimed invention and those of the closest prior art.
We note that the Examiner provides that "[ e ]very ground of rejection
set forth in the Office [ A ]ction dated 5/23/2017 from which the appeal is
taken is ... maintained by the [E]xaminer." Answer 3. The Examiner's
maintained rejection in the Answer, however, relies upon Morinaga, 5 which
was not relied upon in the Non-Final Office Action, mailed May 23, 2017.
Compare Non-Final Act. 3 with Answer 4. 6 Nonetheless, the Examiner's
application of Morinaga in the Answer does not change the obviousness of
instant claim 1 in view of the combination ofNishihata, Williams, Jr., and
Soeta.
5 US 2003/0144163 Al, published July 31, 2003.
6 The Examiner applied Morinaga in a previous rejection issued in the Non-
Final Office Action, mailed September 13, 2016, but the Examiner withdrew
that rejection in view of Appellants' Request for Consideration, mailed
December 9, 2016. As explained by the Examiner, Appellants' "arguments
... have been fully considered and are persuasive with regard to ...
Morinaga[]. Therefore, the rejection has been withdrawn." Non-Final Act
4--5 (internal citations omitted).
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Appeal2018-003858
Application 13/989,605
Appellants argue that the Examiner's reliance upon Williams, Jr., and
Soeta fails to cure the deficiencies ofNishihata. 7 Appeal Br. 5. We,
however, agree with the Examiner that Appellants have not identified any
such deficiencies and, therefore, have not shown reversible error.
In view of the foregoing, we affirm the Examiner's rejection of claims
1 and 2.
CONCLUSION
For the reasons set forth above, we affirm the§ 103(a) rejection of
claims 1 and 2 of the '605 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7 Appellants' Reply Brief contains, for the first time, specific arguments
regarding Nishihata's exemplified wafer embodiments having a 200 nm
thick oxide film. Reply Br. 4, 9. These arguments are untimely. We,
therefore, will not entertain them. Ex parte Nakashima, 93 USPQ2d 1834
(BP AI 2010) (informative) ( explaining that arguments and evidence not
timely presented in the principal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.").
9