Ex Parte Nopper et al

Board of Patent Appeals and Interferences

Mar 30, 2010

11043400 (B.P.A.I. Mar. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARKUS NOPPER, AXEL PREUSSE, and
MATTHIAS BONKASS
____________

Appeal 2009-007231
Application 11/043,400
Technology Center 1700
____________

Decided: March 30, 2010
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 23-38.1 (App. Br. 3; Final Rejection mailed December
20, 2007, (hereinafter “Final”).) We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).

1 Claims 1-22 have been canceled. (Appeal Brief filed May 8, 2008,
(hereinafter “App. Br.”) at 2.)
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We AFFIRM.
THE INVENTION
Appellants describe a method for operating a plating tool. (Spec.
6:14-19.) Claim 23, reproduced below, is representative of the subject
matter on appeal.
23. A method of operating a plating tool, the method
comprising:
supplying a predefined amount of a plating solution including at
least one organic additive from a support tank to a
substrate;
plating at least one substrate so that a portion of the predefined
amount of the plating solution is consumed, leaving a
non-consumed portion of the predefined amount of the
plating solution;
collecting the non-consumed portion of said plating solution;
reclaiming said non-consumed portion of said plating solution;
and
supplying said non-consumed portion as a reclaimed plating
solution to said support tank for reuse with another
substrate.

(App. Br., Claims Appendix A1)

The Examiner rejected claims 23-31, 33-35, 37, and 38 under 35
U.S.C. § 103(a) as being unpatentable over Blachier (US 2002/0112952 A1,
published Aug. 22, 2002) in view of Andricacos (US 5,352,350, issued Oct.
4, 1994). The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as being
unpatentable over Blachier in view of Andricacos, and further in view of
Belongia (US 6,391,209 B1, issued May 21, 2002). The Examiner rejected
claim 36 under 35 U.S.C. § 103(a) as being unpatentable over Blachier in
view of Andricacos, and further in view of Wang (US 7,238,265 B2, issued
July 3, 2007).
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Application 11/043,400

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The Examiner found that Blachier discloses the recited method for
operating a plating tool with the exception of applying a batch method and
collecting non-consumed solution in response to the completion of plating
one substrate. (Examiner’s Answer entered July 17, 2008, (hereinafter
“Ans.”) at 3-5.) The Examiner found that Andricacos discloses batch
processing of a single wafer and replenishment of consumed solution in
response to the processing of a wafer. (Ans. 5.) The Examiner determined
that it would have been obvious to use the batch processing of wafers in the
method of Blachier in order to prevent waste of non-consumed solution.
(Ans. 6.)
Appellants contend that the references fail to teach or suggest all the
limitations in the claims. Specifically, Appellants argue that Blachier
discloses a continuous supply of plating solution and Andricacos discloses
discarding the chemical bath solution in its entirety rather than collecting a
non-consumed portion of a plating solution and reclaiming the non-
consumed portion of the plating solution. (App. Br. 8-9.) Thus, Appellants
contend that both Blachier and Andricacos teach away from the Examiner’s
modification of the prior art. (Id.)

ISSUE
Did the Examiner err in concluding that the method recited in claim
23 of “supplying a predefined amount of a plating solution . . . collecting the
non-consumed portion of said plating solution [and] . . . reclaiming said non-
consumed portion of said plating solution” would have been obvious over
Blachier in view of Andricacos?
We answer this question in the negative.
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Application 11/043,400

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Blachier discloses a process for operating a plating cell, where
after plating, the used plating substances are converted to reusable
plating substances. (Paras. [0015] and [0018].)
2. Blachier discloses that one of the methods for monitoring the
plating substances is by the number of objects plated. (Para.
[0019].)
3. Adricacos discloses that plating processes are operated in batch
mode with a control system that replenishes the bath. (Col. 1, ll.
18-27, 41-49.)
4. Adricacos discloses that by controlling the concentrations of
chemical species in the bath, the bath life is extended indefinitely.
(Col. 4, l. 51 – col. 5, l. 4.)
5. Belongia discloses a system and method for reusing plating baths,
which is applicable to continuous or batch processes. (Abstract.)

PRINCIPLES OF LAW
It is well established that “it is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). In addition,
“[c]ombining the teachings of references does not involve an ability to
combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (emphasis in original).
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In an obviousness rejection, the combination of references must be
considered as a whole, rather than the specific teaching of each reference. In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); In re Simon, 461 F.2d
1387, 1390 (CCPA 1972).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the
applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In determining whether
prior art references teach away from the claimed combination, the nature of
the teachings is highly relevant. Id.

ANALYSIS and CONCLUSIONS
Appellants have grouped claims 23-31, 33, and 37, 34, 35, and 38
subject to the first grounds of rejection separately. However, Appellants rely
on similar arguments for each group of claims. Accordingly, we confine our
discussion to appealed claim 23, which contain claim limitations
representative of the arguments made by Appellants, and address other
claims only to the extent that Appellants have argued them separately
pursuant to 37 C.F.R. § 41.37(c)(1)(vii).2 In addition, for claims 32 and 36,

2 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
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Appellants do not present any additional arguments for these claims.
Accordingly, our comments regarding claim 23 apply equally to claims 32
and 36.
We are not persuaded by Appellants’ arguments that Blachier and
Andricacos fail to suggest all of the recited limitations. Appellants unduly
focus on each reference individually, rather than what the prior art as a
whole would have conveyed to one of ordinary skill in the art. As pointed
out by the Examiner, Andricacos does not discard the entire electroplating
solution, but that according to the invention, the bath may be maintained for
an indefinite period of time. (Ans. 9; FF 4.) In addition, the Examiner states
that “one having ordinary skill in the art would have the ability to make a
system either continuous or batch . . . .” (Ans. 10-11; see FF 5.) Therefore,
when viewing the prior art as a whole, we cannot agree with Appellants that
Blachier and Andricacos teach away from the Examiner’s modification.
Regarding claims 34 and 38, Appellants additionally contend that
Andricacos discloses that the criterion for replacing the plating solution is
the quality of the chemical bath, not whether the processing of the substrate
has been completed. (App. Br. 10.) As the Examiner again points out,
Appellants rely solely on the background information of Andricacos rather
than the reference as a whole. (Ans. 11-12.) Moreover, Blachier discloses
that the monitoring aspect of the method of plating substances is the number
of objects plated. (FF 2.) Accordingly, Appellants arguments are not
persuasive. As a result we affirm the Examiner’s rejection of claims 23-31
and 33-38 as being unpatentable over Blachier in view of Andricacos.

not to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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Application 11/043,400

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We also affirm the Examiner’s rejections of claims 32 and 36 for the
same reasons.

ORDER
We affirm the Examiner’s decision rejecting claims 23-38 under 35
U.S.C. § 103(a).
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)(v).
AFFIRMED

rvb

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