Ex Parte UZOH et al

Board of Patent Appeals and Interferences

Sep 16, 2003

09351868 (B.P.A.I. Sep. 16, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 15

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CYPRIAN EMEKA UZOH
and
HOMAYOUN TALIEH
__________

Appeal No. 2003-1980
Application No. 09/351,868
___________

ON BRIEF
___________

Before OWENS, WALTZ, and MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-3, 5-9, 11-20, 49-52, 66, 67, 71-80, 85, and
86. Claims 21-37, 55-62, and 64 are allowed. Claims 4, 10, 53,
54, 68-70, and 81-84 are objected to. Claims 38-48, 63, and 65
have been canceled. Thus, only claims 1-3, 5-9, 11-20, 49-52, 66,
67, 71-80, 85, and 86 are before us on this appeal.

Appeal No. 2003-1980
Application No. 09/351,868

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REPRESENTATIVE CLAIMS
Claims 1, 5, 6, 17, 49, 73 and 74 are representative and read
as follow:
1. A method for simultaneously cleaning and annealing a
metallic layer plated on a workpiece having an insulating
substrate, the method comprising the step of applying a cleaning
and annealing fluid to the metallic layer while heating the
workpiece and the applied cleaning and annealing fluid.

5. A method according to claim 1, wherein the cleaning and
annealing fluid comprises deoxygenated de-ionized water.

6. A method according to claim 5 further comprising the step
of deoxygenating the deionized water by adding bubbled nitrogen to
the de-ionized water.

17. A method according to claim 1, wherein the cleaning and
annealing fluid comprises propylene glycol.

49. A method for altering the grain size and the texture of
a metallic layer formed over an insulating substrate, the method
comprising the step of heating the substrate and deoxygenated de-
ionized water while applying the deoxygenated de-ionized water to
the substrate.

73. A method for simultaneously cleaning and annealing a
metallic layer plated on a workpiece having an insulating
substrate, the method comprising the step of applying a heated
cleaning and annealing fluid to the metallic layer to both clean
and anneal the metallic layer.

74. A method according to claim 73, wherein the cleaning and
annealing fluid comprises deoxygenated de-ionized water.

Appeal No. 2003-1980
Application No. 09/351,868

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The References
In rejecting the claims under 35 U.S.C. § 103(a), the
examiner relies upon the following references:
Foreman 3,865,642 Feb. 11, 1975
Allain et al. (Allain) 3,928,443 Dec. 23, 1975
Wahlbeck 4,902,342 Feb. 20, 1990
Cohen et al. (Cohen) 5,800,626 Sep. 01, 1998
The Rejections
A. Claims 1-3, 5, 11-16, 19, 20, 49-52, 66, and 67 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Allain.
B. Claims 1-3, 12-16, 19, 20, 66, 71-73, 75-80, 85, and 86
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Wahlbeck.
C. Claims 17 and 18 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Allain or Wahlbeck in view of Foreman.
D. Claims 6-9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Allain in view of Cohen.
E. Claim 74 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wahlbeck in view of Allain.

Appeal No. 2003-1980
Application No. 09/351,868

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The Invention
The invention relates to a method for cleaning and annealing
a metallic layer on a workpiece having an insulating substrate by
applying a cleaning and annealing fluid to the metallic layer
while heating the workpiece and the applied cleaning and annealing
fluid. (See, e.g., claim 1).
A. The Rejection of Claims 1-3, 5, 11-16, 19, 20, 49-52, 66,
and 67 under 35 U.S.C. § 103(a) as being unpatentable over Allain.

The examiner has found that Allain teaches treating metal
such as a copper aluminum alloy with deionized, deoxygenated
water. (Examiner’s Answer, page 4, lines 14-15). The examiner
states that Allain does not disclose cleaning and annealing, but
finds that Allain would clean and anneal at the temperatures
recited. (Examiner’s Answer, page 4, lines 17-19). The examiner
further states that Allain does not specify that the material
being treated is a metallic layer, but finds that any material
undergoing treatment can be considered a layer and the copper
alloy of Allain is the layer, while any substance on which the
metal rests is an insulating substrate (Examiner’s Answer, page 5,
lines 12-19).
The appellants, on the other hand, urge that Allain is
directed to dissolving aluminum from particles, not annealing
metal plated on a workpiece (Appeal Brief, page 4, lines 7-9).
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Application No. 09/351,868

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The appellants further urge that the claims recite that the
metallic layer is plated on a workpiece that has an insulating
substrate, which is much narrower than any metal undergoing
treatment. (Appeal Brief, page 4, lines 26-30).
We agree with the appellants. We find that the independent
claims, claim 1, 49, and 73, are restricted to a method involving
a metallic layer formed over an insulating substrate. For
example, claim 1 specifically recites that a cleaning and
annealing fluid is applied to a metallic layer and claim 73
specifically references the metallic layer, each in the body of
the claim. Claim 49 references the layer in the preamble and such
reference is necessary to understand the grain size adjustment
which occurs in the metal layer.
Generally, the preamble does not limit the claims. DeGeorge
v. Bernier, 768 F.2d 1318, 1322 n.3, 226 USPQ 758, 764 n.3 (Fed.
Cir. 1985). However, the preamble may be limiting “when the claim
drafter chooses to use both the preamble and the body to define
the subject matter of the claimed invention.” Bell Communications
Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620,
34 USPQ2d 1816, 1820 (Fed. Cir. 1995). If the preamble is
“necessary to give life, meaning and vitality” to the claim, then
the claim preamble should be construed as limiting. Kropa v.
Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951). This
Appeal No. 2003-1980
Application No. 09/351,868

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is determined “on the facts of each case in view of the claimed
invention as a whole.” In re Stencel, 828 F.2d 751, 754, 4 USPQ2d
1071, 1073 (Fed. Cir. 1987); see also Applied Materials, Inc. v.
Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572-73,
40 USPQ2d 1481, 1488 (Fed. Cir. 1996) (“Whether a preamble stating
the purpose and context of the invention constitutes a limitation
. . . is determined on the facts of each case in light of the
overall form of the claim, and the invention as described in the
specification and illuminated in the prosecution history.”).
In this instance, the inventor has chosen to, and admits
that, these claims are limited by the preamble. The use of the
term “layer” in the body of the claim requires reference to the
preamble to understand the structural relationships involved.
Accordingly, we conclude, based upon the facts of this claim, that
claim 1 is limited by its preamble.
Likewise, claim 49 accomplishes its method of altering grain
size of a metallic layer by heating a substrate. The metallic
layer is defined as plated upon the substrate in the preamble.
Accordingly, based upon the facts of this claim, we conclude that
the preamble limits claim 49 and requires a metallic layer.
Finally, claim 73 contains similar structural relationships
as claim 1. The body of the claim references the metallic layer,
while the preamble defines that layer as plated on a workpiece
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Application No. 09/351,868

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having an insulating substrate. Accordingly, we also conclude
that, based upon the facts of this claim, claim 73 is limited by
its preamble and requires the presence of the metallic layer
plated on a workpiece.
Turning to the cited reference, we observe that it discusses
treating particles of a metal alloy, which particles can range
from 0.001 to 0.5 inch. (Column 1, lines 43-49). We are unable
to discern where treating a metal layer plated on a workpiece is
disclosed. We disagree with the Examiner’s conclusion that “any”
metal material undergoing treatment can be a layer and the
substance upon which that metal rests is a substrate. The
independent claims clearly require the metal layer to be plated
upon the workpiece.
As the examiner has not shown this element of the claimed
invention to be present in the cited prior art, we are constrained
to reverse this rejection.
B. The Rejection of Claims 1-3, 12-16, 19, 20, 66, 71-73, 75-
80, 85, and 86 under 35 U.S.C. § 103(a) as being unpatentable over
Wahlbeck.

The examiner has found that Wahlbeck discloses annealing
copper wire using highly purified deionized water. The wire is
heated and the examiner states that the water would inherently
clean the wire. The examiner also finds that the wire undergoing
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Application No. 09/351,868

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treatment is equivalent to the claimed layer, and that the idle
running contact roller is equivalent to the substrate of the
appealed claims. (Examiner’s Answer, page 6, lines 5-15).
The appellants, on the other hand, again maintain that the
metal pieces of Wahlbeck are not covered by the instant claims,
that Wahlbeck has no relevance to the instant claims, and that
there is no teaching that Wahlbeck operates as the instant claims
recite. (Appeal Brief, page 5, lines 12-24).
Again, we agree with the appellants. Wahlbeck discloses
annealing metal jewelry in deionized water (column 7, lines 19-21
and 55-57). However, we find that the wire, resting on the
running contact roller, is not equivalent to, and does not teach,
the claimed metal layer plated on a workpiece having an insulating
substrate. Accordingly, we reverse this rejection.
C. The Rejection of Claims 17 and 18 under 35 U.S.C. §103(a)
as being unpatentable over Allain or Wahlbeck in view of Foreman.

The examiner has found that Foreman teaches the use of
propylene glycol in a metal treating fluid. Thus, the examiner
concludes, it would have been obvious to use a cleaning and
annealing fluid of propylene glycol in the Allain or Wahlbeck
processes. (Examiner’s Answer, page 7, lines 6-10).
The appellants urge, again, that Allain and Wahlbeck are
inapplicable. (Appeal Brief, page 6, lines 15-17).
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We agree with the appellants that Allain and Wahlbeck do not
render the invention as claimed obvious, and that Foreman does not
remedy the deficiencies discussed above with respect to each
reference. Accordingly, we reverse this rejection.
D. The Rejection of Claims 6-9 under 35 U.S.C. §103(a) as
being unpatentable over Allain in view of Cohen.

The examiner has found that Cohen indicated the use of gases
as claimed in claims 6-8 are conventional in the art of producing
deoxygenated water. Accordingly, he concludes that one of
ordinary skill in the art would have been motivated to produce
deoxygenated water in this manner. (Examiner’s Answer, page 7,
last paragraph).
The appellants again note that the combination of Allain with
Cohen does not support a rejection under section 103 as Allain is
inapplicable. (Appeal Brief, page 7, lines 8-10). We agree, for
the reasons recited above, and reverse this rejection as well.
E. The Rejection of Claim 74 under 35 U.S.C. § 103(a) as
being unpatentable over Wahlbeck in view of Allain.

The examiner has found that Allain indicates the use of
deoxygenated water is preferable in treating metals with deionized
water. Accordingly, he concludes that it would have been obvious
to use the deionized water of Allain in the Wahlbeck process.
(Examiner’s Answer, page 8, lines 3-7).

Appeal No. 2003-1980
Application No. 09/351,868

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The appellants again urge that Allain is inapplicable, and
that Wahlbeck is distinguished from the claimed invention.
(Appeal Brief, page 7, lines 17-24).
Again, we agree that neither Allain nor Wahlbeck teach
treating the plated metal layer, as required by the instant
claims. Accordingly, we reverse this rejection.
Summary of Decision
The rejection of claims 1-3, 5, 11-16, 19, 20, 49-52, 66, and
67 under 35 U.S.C. § 103(a) as being unpatentable over Allain is
reversed.
The rejection of claims 1-3, 12-16, 19, 20, 66, 71-73, 75-80,
85, and 86 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wahlbeck is reversed.
The rejection of claims 17 and 18 under 35 U.S.C. §103(a) as
being unpatentable over Allain or Wahlbeck in view of Foreman is
reversed.
The rejection of claims 6-9 under 35 U.S.C. §103(a) as being
unpatentable over Allain in view of Cohen is reversed.
Appeal No. 2003-1980
Application No. 09/351,868

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The rejection of claim 74 under 35 U.S.C. § 103(a) as being
unpatentable over Wahlbeck in view of Allain is reversed.

REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. MOORE )
Administrative Patent Judge )

JTM/ki
Appeal No. 2003-1980
Application No. 09/351,868

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