Ex Parte Waleh et al

Board of Patent Appeals and Interferences

Jan 4, 2011

10786280 (B.P.A.I. Jan. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/786,280 02/24/2004 Ahmad Waleh D-95013A1A 3880
7590 01/04/2011
David W. Collins
Intellectual Property Law
Suite 100
512 E. Whitehouse Canyon Road
Green Valley, AZ 85614
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
01/04/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AHMAD WALEH
and ERIC O. LEVENSON
____________________

Appeal 2009-013067
Application 10/786,280
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013067
Application 10/786,280

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 through 4, 6, 7, 11 through 14, 18
through 25, 29, and 30. Claims 5, 8 through 10, 15 through 17, and 26
through 28, the other claims pending in this application, stand withdrawn
from consideration by the Examiner. We have jurisdiction pursuant to 35
U.S.C. § 6.
We REVERSE.

STATEMENT OF THE CASE
The subject matter on appeal is directed to an improved method of
partially or completely removing organic coatings, films, layers or residues
from a substrate. The standard method (representative claim 1 is written in
Jepson format) involves (1) exposing the substrate to sulfur trioxide gas and
then (2) rinsing the substrate with a solvent. The critical improvements, for
purposes of this appeal, are the following additional steps:
(b) subjecting said substrate of step (a) to a precursor
chemical or physical treatment prior to step (1) capable of
facilitating said reaction of said sulfur trioxide
with said organic material to be removed;
* * *
(f) subjecting said substrate to a chemical or physical post-
rinse treatment subsequent to step (2) capable of removing
any residual organic matter from said substrates remaining
after said solvent rinse.
The Examiner maintains the rejection of claims 1-4, 6, 7, 11-14, 18-25
and 29-30 under 35 U.S.C. § 103(a) over Gupta (US 5,037,506, issued Aug.
6, 1991) in view of Mayer (US 3,893,869, issued Jul. 8, 1975) and further in
view of Nachshon (US 5,114,834, issued May 19, 1992); the Engelsberg
article (Laser-Assisted Cleaning Proves Promising, CLEANING
Appeal 2009-013067
Application 10/786,280

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ALTERNATIVES, May 1995); Engelsberg ‘472 (US 5,643,472, issued Jul. 1,
1997); Engelsberg ‘857 (US 5,531,857, issued Jul. 2, 1996); Engelsberg
‘968 (US 5,024,968, issued Jun. 18, 1991); Livshits (WO 97/17164,
published May 15, 1997); and Elliott (WO 95/07152, published Mar. 16,
1995).

ISSUE
Did the Examiner’s § 103 rejection over the applied prior art
references satisfy the Examiner’s initial burden of presenting a prima facie
case of obviousness so as to shift the burden to Appellants to establish non-
obviousness of the claimed invention? We decide this issue in the negative.

FINDINGS OF FACT (FF)
1. The Specification discloses that the rinse solvent may be “water, a
lower alkanol (1 to 5 carbon atoms), acetone, or mixtures thereof,
various acidic or alkaline solutions or amine-based solutions.”
(Spec. ¶ [0067]).
2. The Specification discloses that “[p]recursor physical or chemical
treatments include . . . ultra-violet light radiation (UV).”
(Spec. ¶ [0059]).
3. The Specification discloses that “[p]re-rinse physical or chemical
treatments include . . . sound energy such as megasonic or ultrasonic
treatments.” (Spec. ¶ [0066]).
4. The Specification discloses that “[p]ost-rinse physical or chemical
treatments include . . . laser energy.” (Spec. ¶ [0068]).
Appeal 2009-013067
Application 10/786,280

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5. Gupta teaches stripping a polymerized photoresist via, inter alia,
exposing the polymerized photoresist to gaseous sulfur trioxide and
rinsing in a solution to remove any reaction products. (Gupta, col. 4,
ll. 15-57 and col. 1, ll. 5-17 and col. 2, ll. 31-50). In this regard,
Gupta teaches that “sulfur trioxide vapor for 45 seconds followed by
rinsing with water resulted in complete removal of the organic
coatings (photoresists) from the exposed surfaces.” (Gupta, col. 5, l.
67 to col. 6, l. 2).
6. Gupta does not disclose a chemical or physical post-rinse treatment as
recited in the claims on appeal.
7. Nachshon teaches the complete stripping of a photoresist layer using,
inter alia, a reactive atmosphere before irradiation via pulsed laser.
(Nachshon, col. 2, l. 33 to col. 3, l. 60).
8. The Engelsberg article, Engelsberg ‘472, Engelsberg ‘857, Engelsberg
‘968, Elliott, and Livshits, individually teach the removal of material
or contaminants using, inter alia, a laser. (The Engelsberg article, p.
157; Engelsberg ‘472, col. 3, l. 60 to col. 4, l. 30; Engelsberg ‘857,
col. 3, ll. 5-19; Engelsberg ‘968, col. 4, ll. 25-50; Elliott, pp. 3-7; and
Livshits, pp. 1-6).
9. Neither Nachshon, the Engelsberg article, Engelsberg ‘472,
Engelsberg ‘857, Engelsberg ‘968, Elliott, nor Livshits disclose the
claimed solvent rinse prior to the laser treatment.

PRINCIPLES OF LAW
The Examiner bears the initial burden of establishing a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 2009-013067
Application 10/786,280

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“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS AND CONCLUSION
Appellants argue that the Examiner relied upon impermissible
hindsight in combining the cited prior art references. (App. Br. 11). In
addition, Appellants argue that
there is not the slightest disclosure or suggestion that such laser
cleaning is used in conjunction with a sulfur trioxide [and
solvent rinse] treatment. Indeed, these references all suggest
complete removal of the resist by the disclosed procedures.
There would be no incentive for one skilled in the art to include
such a procedure as part of Appellants’ claimed process . . . .
(App. Br. 7). Appellants also argue that the Examiner cites Nachshon, the
Engelsberg article, Engelsberg ‘472, Engelsberg ‘857, Engelsberg ‘968,
Livshits, and Elliott “for their teaching of ‘precise cleaning and photoresists
removal by lasers’ . . . [however] Appellants can find no mention of a
solvent rinse preceding the laser treatment [which corresponds to the
claimed chemical or physical post-rinse treatment].” (App. Br. 11 and 12).
We agree.
Gupta teaches completely stripping a polymerized photoresist via,
inter alia, exposing the polymerized photoresist to gaseous sulfur trioxide
Appeal 2009-013067
Application 10/786,280

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and rinsing in a solution (solvent rinse) to remove any reaction products.
(FF 5).
The Examiner relies on Nachshon, the Engelsberg article, Engelsberg
‘472, Engelsberg ‘857, Engelsberg ‘968, Livshits, and/or Elliott to teach the
use of a laser as corresponding to the claimed chemical or physical post-
rinse treatment. (Ans. 4, 5, and 7-9). In this regard, Nachshon teaches the
complete stripping of a photoresist layer using, inter alia, a reactive
atmosphere before irradiation via a pulsed laser (chemical or physical post-
rinse treatment). (FF 7). Similarly, the Engelsberg article, Engelsberg ‘472,
Engelsberg ‘857, Engelsberg ‘968, Elliott, and Livshits, individually teach
the removal of material or contaminants using, inter alia, a laser. (FF 8).
The Examiner, however, has not provided an adequate reason why one
of ordinary skill would have employed a laser subsequent to Gupta’s rinse
step (solvent rinse) in view of the fact that Gupta teaches that its photoresist
stripping process completely removes a photoresist.
In this regard, although the Examiner states (Ans. 5 and 9) that “the
other cited documents teach that chemical and wet treatments may be
insufficient to remove all contaminants and/or all photoresists,” the
Examiner fails to direct us to any credible evidence or provide any
persuasive explanation to show that contaminants remain on a substrate after
Gupta’s solvent rinse step thereby inviting the post-rinse treatment recited in
the claims on appeal.
Thus, it follows that the Examiner’s § 103 rejection over the applied
prior art references does not satisfy the Examiner’s initial burden of
presenting a prima facie case of obviousness so as to shift the burden to
Appellants to establish non-obviousness of the claimed invention.
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Application 10/786,280

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Accordingly, we do not sustain the Examiner’s decision to reject
claims 1-4, 6, 7, 11-14, 18-25 and 29-30 under § 103(a) over the applied
prior art references.

ORDER
The Examiner’s decision is reversed.

REVERSED

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DAVID W. COLLINS
INTELLECTUAL PROPERTY LAW
SUITE 100
512 E. WHITEHOUSE CANYON ROAD
GREEN VALLEY, AZ 85614