Ex Parte Wang et al

Board of Patent Appeals and Interferences

Aug 25, 2009

09847511 (B.P.A.I. Aug. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte YU-HIS WANG,
WEN-HXIANG TSENG, and WEI-JEN HUANG
______________

Appeal 2009-005720
Application 09/847,511
Technology Center 1700
_______________

Decided: August 25, 2009
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 7 and 9 through 20 in the Office
Action mailed May 18, 2004. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. §
41.31(a) (September 13, 2004).
We dismiss the appeal with respect to claims 1 through 4 and 7.
Appeal 2009-005720
Application 09/847,511
2
Appellants did not respond as required under 37 C.F.R. § 41.50(a)(2) to the
Supplemental Examiner’s Answer mailed December 15, 2005, further
considering grounds of rejection of claims 1 through 4 and 7, in response to
our Remand entered October 25, 2005, in Appeal No. 2005-2040 in this
Application. See Rem. 4:6-25.
Thus, claims 5, 6, and 9 through 20 remain for consideration on
appeal.
We affirm the decision of the Primary Examiner.
Claim 5, dependent on independent claim 1, and independent claim 9
illustrate Appellants’ invention of a wet stripping apparatus for removing
unwanted film layers from a wafer surface and a method for removing
unwanted film layers from a wafer surface by wet stripping, respectively,
and are representative of the claims on appeal:
1. A wet stripping apparatus for removing unwanted film layers from
a wafer surface comprising:
a tank body for holding a volume of a stripper solution therein;
a wafer holder for holding at least one wafer therein in a vertical
position such that a planar surface of the wafer is parallel to a vertical tank
wall of said tank body; and
means for reciprocally moving said wafer holder in an up-and-down
motion with said at least one wafer immersed in said stripper solution at a
frequency of up to 100 cycle/min.
5. A wet stripping apparatus for removing unwanted film layers from
a wafer surface according to claim 1, wherein said means for reciprocally
moving said wafer is an air cylinder assembly.
9. A method for removing unwanted film layers from a wafer surface
comprising the steps of:
providing a tank body and filling the tank body with a volume of a
stripper solution;
Appeal 2009-005720
Application 09/847,511
3
providing a wafer holder holding at least one wafer therein in a
vertical position with a planar surface of the wafer parallel to a vertical tank
wall of said tank body;
mounting said wafer holder in said tank body immersed in said
stripper solution; and
moving said wafer holder reciprocally in an up-and-down motion with
said at least one wafer immersed in said stripper solution at a frequency of
not more than 100 cycle/min.
The Examiner relies upon the evidence in these references (Ans. 3):1
Komatsuzaki 4,417,945 Nov. 29, 1983
Noguchi 4,657,631 Apr. 14, 1987
Erk 5,593,505 Jan. 14, 1997
Ward 5,988,186 Nov. 23, 1999

Handbook of Semiconductor Wafer Cleaning Technology p. 24 (Werner
Kern, ed., Noyes Publications. 1993) (hereinafter “Handbook”).
Appellants request review of the following grounds of rejection of the
appealed claims advanced on appeal by the Examiner (Br. 4-5):
Claims 5 and 6 under 35 U.S.C. § 102(b) over Komatsuzaki (Ans. 3);
claims 9 and 15 under 35 U.S.C. § 103(a) over Komatsuzaki in view of Erk
(Ans. 6);
claims 10 and 11 under 35 U.S.C. § 103(a) over Komatsuzaki in view of Erk
further in view of Ward (Ans. 9);
claims 12, 13, 16, 17, and 20 under 35 U.S.C. § 103(a) over Komatsuzaki in
view of Erk further in view of Noguchi (Ans. 10);
claim 14 under 35 U.S.C. § 103(a) over Komatsuzaki view of Erk further in
view of Handbook (Ans. 11);
claim 18 under 35 U.S.C. § 103(a) over the combined teachings of
Komatsuzaki, Erk, and Noguchi further in view of Ward (Ans. 12); and

1 We consider the Appeal Brief filed November 3, 2004, and the Examiner’s
Answer mailed December 15, 2005.
Appeal 2009-005720
Application 09/847,511
4
claim 19 under 35 U.S.C. § 103(a) over the combined teachings of
Komatsuzaki, Erk, and Noguchi further in view of Handbook (Ans. 13)
Appellants argue the claims in each ground of rejection as a group.
Br. 6, 9,14, 15, and 16. Thus, we decide this appeal based on claims 5, 9,
10, 12, 14, 18, and 19 as representative of the grounds of rejection and
Appellants’ groupings of claims. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
Issues
The issues in this appeal are whether Appellants have shown that the
evidence in Komatsuzaki does not support the Examiner’s finding of prima
facie anticipation of the invention encompassed by claim 5, and whether
Appellants have shown that the evidence in the combined teachings of
Komatsuzaki and Erk alone and as further combined with one or more of
Ward, Noguchi, and Handbook, does not support the Examiner’s conclusion
of prima facie obviousness of the invention encompassed by claims 9, 10,
12, 14, 18, and 19.
Claim Interpretation
The plain language of representative claim 5, dependent on claim 1,
specifies a wet stripping apparatus comprising at least, among other things,
any air cylinder assembly which reciprocally moves a wafer holder in an up-
and-down motion at a frequency of up to 100 cycle/min. Thus, the
frequency range of the reciprocally up-and-down motion is from 1 to 100
cycle/min. Similarly, the plain language of representative claim 9 specifies a
method of wet stripping a wafer surface comprising at least the steps
including, among other things, the step of reciprocally moving a wafer
holder immersed in stripper solution in a tank body, in an up-and-down
motion with the wafer in the wafer holder remaining immersed in stripper
Appeal 2009-005720
Application 09/847,511
5
solution, at a frequency of up to 100 cycle/min. The frequency range of the
reciprocally up-and-down motion is from 1 to 100 cycle/min. See, e.g., In re
Icon Health and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007); In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and
cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
Findings of Fact
We find Komatsuzaki would have disclosed to one of ordinary skill in
this art, as illustrated by embodiments depicted in Figure 4, an apparatus for
chemically etching wafers 11, 12 in wafer holders 21, 22 in vat 5, wherein,
among other things, holder arms 10, 10 of wafer holders 21, 22 are
reciprocally moved “up and down by means of a mechanism with a cylinder
and a piston, cums [sic], crankshafts and the like (not shown in the figure) so
that the wafer materials 11,12 held by the sucking units 21,22 are also
moved up and down.” Komatsuzaki col. 4, ll. 60-65; see also col. 2, ll. 7-38,
and col. 3, ll. 46-63.
We find Erk would have disclosed to one of ordinary skill in this art,
an apparatus for cleaning wafers in which the wafer is reciprocated in a
generally up and down motion “so that the central region of the wafer
repeatedly passes through the surface of the [clearing] liquid.” Erk col. 1,
l. 60 to col. 2, l. 7; see also col. 5, ll. 552-63, and Figs, 2 and 3. The
apparatus has an ultrasonic tank and “ultrasonic energy will clean a portion
of a . . . wafer located at or just slightly below the gas-liquid-interface at a
faster rate than . . . well below the gas-liquid-interface” which is at the
surface of the liquid in the tank. Erk col. 3, ll. 2-3 and 7-15; see also
abstract. The wafers are reciprocated up and down at a rate of
Appeal 2009-005720
Application 09/847,511
6
approximately 20 cycle/min. to about 240 cycle/ min., and preferably 60
cycle/min., which affects the cleaning time for the wafer. Erk col. 6, ll. 22-
41.
A discussion of Ward, Noguchi, and Handbook is not necessary to our
decision.
Opinion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 5, 9, 10, 12, 14, 18, and 19, and the
grounds of rejection advanced on Appeal. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After
evidence or argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
Claim 5: Komatsuzaki
We are of the opinion Appellants have not shown that the evidence in
Komatsuzaki does not support the Examiner’s finding of prima facie
anticipation of the invention encompassed by claim 5. Appellants do not
dispute that Komatsuzaki’s cylinder assembly that reciprocally moves the
wafer holder up and down in the vat meets the claimed air cylinder
assembly. Br. 6-8. Appellants submit there is no disclosure in Komatsuzaki
Appeal 2009-005720
Application 09/847,511
7
that the apparatus described therein is capable of reciprocally moving the
wafer holder in an up-and-down motion at a frequency range of from 1 to
100 cycle/min. as claimed. Br. 7-8. We disagree. As the Examiner points
out, Komatsuzaki describes the apparatus as reciprocally moving the wafer
holder in an up-and-down motion in the same manner as the claimed
apparatus, and thus one of ordinary skill in this art would reasonably infer
from Komatsuzaki’s disclosure that the described apparatus would be
capable of a cycle/min. frequency falling within the claimed range of from 1
to 100 cycle/min. Ans. 4-5. See, e.g., In re Graves, 69 F.3d 1147, 1152
(Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed
invention ‘such that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession of the
invention.’”)(quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962)); In re
Preda, 401 F.2d 825, 826-27 (CCPA 1968) (“[I]n considering the disclosure
of a reference, it is proper to take into account not only specific teachings of
the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” (citation omitted)).
On this record, Komatsuzaki’s described apparatus reasonably appears
to be capable of the claimed cycle range, thus shifting the burden to
Appellants to established otherwise. Appellants have not carried the burden
of patentably distinguishing the claimed apparatus encompassed by claim 5
over the apparatus described by Komatsuzaki even though the cycle/min.
frequency rate of Komatsuzaki’s apparatus is not disclosed therein. See,
e.g., In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1255-56 (CCPA 1977); In re Skoner, 517 F.2d 947, 950-51
Appeal 2009-005720
Application 09/847,511
8
(CCPA 1975) (“Appellants have chosen to describe their invention in terms
of certain physical characteristics . . . . Merely choosing to describe their
invention in this manner does not render patentable their method which is
clearly obvious in view of [the reference].” (citation omitted)).
Accordingly, we have again evaluated all of the evidence of
anticipation found in Komatsuzaki with Appellants’ countervailing evidence
of and argument for non-anticipation, and based thereon we conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 5 and 6 would have been
anticipated as a matter of fact under 35 U.S.C. § 102(b).
Claim 9: Komatsuzaki and Erk
We are of the opinion Appellants have not shown that the evidence in
the combined teachings of Komatsuzaki and Erk does not support the
Examiner’s conclusion of prima facie obviousness of the invention
encompassed by claims 9. Appellants contend that one of ordinary skill in
this art would not have combined Komatsuzaki and Erk because the cleaning
methods differ, pointing out that Komatsuzaki immerses the wafer in the
cleaning solution without using sonic energy while Erk half immerses the
wafer in the cleaning solution and uses sonic energy. Br. 10-12; see above
pp. 5-6. We disagree.
We agree with the Examiner that one of ordinary skill in this art
would have recognized that the wafer cleaning methods of each of
Komatsuzaki and Erk reciprocally move a wafer holder in an up-and-down
motion in a cleaning liquid in a tank, and thus are related methods for
cleaning a wafer even if the extent of the reciprocally up-and-down motion
Appeal 2009-005720
Application 09/847,511
9
of the wafer holder in the liquid differs and Erk further employs sonic
energy. Ans. 15-16. Thus, on this record, we further agree with the
Examiner that the combined teachings of Komatsuzaki and Erk would have
reasonably suggested to one of ordinary skill in this art to determine a
workable or optimum range of the frequency of the reciprocally move a
wafer holder in an up-and-down motion in a cleaning liquid in cycle/min as
Erk demonstrates this measurement is a result effective variable. See, e.g.,
In re Boesch, 617 F.2d 272, 276 (CCPA 1980)(“[D]iscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955)(“[W]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.”); With respect to the claimed frequency range, we found
above that one of ordinary skill in this art would reasonably infer from
Komatsuzaki’s disclosure that the described apparatus would be capable of a
cycle/min. frequency falling within the claimed range of from 1 to 100
cycle/min..
Accordingly, we have again evaluated all of the evidence of
anticipation and of obviousness found in the combined teachings of
Komatsuzaki and Erk with Appellants’ countervailing evidence of and
argument for nonobviousness, and based thereon we conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 9 and 15 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
Claims 10, 12, 14, 18, and 19: Komatsuzaki and Erk
further combined with one or more of Ward, Noguchi, and Handbook
Appeal 2009-005720
Application 09/847,511
10
We are further of the opinion Appellants have not shown that the
evidence in the combined teachings of Komatsuzaki and Erk as further
combined with one or more of Ward, Noguchi, and Handbook does not
support the Examiner’s conclusion of prima facie obviousness of the
invention encompassed by claims 10, 12, 14, 18, and 19. The sole argument
advanced by Appellants is that independent method claims 9 and 16 are not
rendered obvious by the combined teachings of Komatsuzaki and Erk as
previously argued, and the further addition of one or more of Ward,
Noguchi, and Handbook does not “lend any additional weight” to the
combination of references of Komatsuzaki and Erk. Br. 14-15, 15-16, 16,
and 17.
We did not subscribe to Appellants’ view of the combined teachings
of Komatsuzaki and Erk above and remain of that view here.
Accordingly, we have again evaluated all of the evidence of
anticipation and of obviousness found in the combined teachings of
Komatsuzaki and Erk further combined with one or more of Ward, Noguchi,
and Handbook with Appellants’ countervailing evidence of and argument for
nonobviousness, and based thereon we conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 10 through 14 and 16 through 20 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

Appeal 2009-005720
Application 09/847,511
11
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

PL Initial:
sld

TUNG & ASSOCIATES
SUITE 120
838 W. LONG LAKE ROAD
BLOOMFIELD HILLS, MI 48302