Ex Parte Wochner et al

Patent Trial and Appeal Board

Oct 8, 2014

12675297 (P.T.A.B. Oct. 8, 2014)

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.
12/675,297 02/25/2010 Hanns Wochner WAS1054PUSA 3277
22045 7590 10/08/2014
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
COLEMAN, RYAN L
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
10/08/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANNS WOCHNER, CHRISTIAN GOSSMANN, and
HERBERT LINDNER
____________

Appeal 2013-000710
Application 12/675,2971
Technology Center 1700
____________

Before FRED E. McKELVEY, RICHARD E. SCHAFER, and
KIMBERLY J. McGRAW, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 19–21. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Wacker Chemie AG of
Munich, Germany. Appeal Br. 1.

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BACKGROUND
Appellants’ invention is directed to methods for purifying polysilicon
fragments. Appeal Br. 2.
Claims 19 and 21 are independent claims.
Claim 19 recites:
19. A method for purifying polysilicon fragments in an etching tank
containing a purifying liquid, comprising lowering the polysilicon
fragments into the etching tank, impinging a purifying liquid onto the
surface of the polysilicon fragments from more than two different
directions at a flow velocity of greater than 100 mm/sec, wherein such
flow of the purifying liquid is effected by a circular movement of the
polysilicon fragments within the purifying liquid and an additional
lifting/lowering movement of the polysilicon fragments a plurality of
times during purifying within the etching tank, and raising the
polysilicon fragments from the etching tank.

Claim App’x 1.

Claim 21 recites:
21. A method for purifying polysilicon fragments in an etching
tank, comprising impinging a purifying liquid onto the surface of the
polysilicon fragments from more than two different directions at a
flow velocity of greater than 100 mm/sec, wherein such flow of the
purifying liquid is effected by non-directional injection of air by
means of nozzles.

Claim App’x 1.
THE REJECTIONS
The Examiner has maintained the following rejections:
(1) Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) over
Köppl et al. U.S. 5,820,688, patented Oct. 13, 1998 (“Köppl”) in
view of Bowden U.S. 5,421,883, patented June 6, 1995
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(“Bowden”) in view of Wochner et al. U.S. 6,309,467, patented
Oct. 30, 2001 (“Wochner”). Answer 3.
(2) Claim 21 stands rejected under 35 U.S.C. § 103(a) over Köppl in
view of Izumi et al. U.S. published patent application
2007/0221254 A1, published Sept. 27, 2007 (“Izumi”) in view of
Weaver U.S. 4,403,735, patented Sept. 13, 1983 (“Weaver”).
Answer 7.

ANALYSIS
I. Claims 19 and 20
Appellants argue that the Examiner erred in rejecting claims 19 and
20 as obvious over the cited art because (1) some of the cited references are
non-analogous art, (2) even if the cited art were analogous, the cited art does
not teach or suggest the all of the claim limitations, and (3) one of skill in the
art would not have predicted that a combination of rotating and
lifting/lowering movements, coupled with a flow velocity would not only
remove metal contaminants from polysilicon but would also prevent gray
spots. Appeal Br. 4–13. Appellants also argue that the invention satisfied a
long felt need of removal of metallic contaminants from polysilicon. Appeal
Br. 4–5. Appellants’ arguments have not persuaded us that the Examiner
erred in rejecting of claims 19 and 20.
A. Analogous Art
Appellants argue that neither Bowden nor Wen are analogous art.
Appeal Br. 5.
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Regarding the Wen reference2, we note that the Examiner has
withdrawn reliance upon Wen and that the Examiner relies upon Bowden as
teaching that the rotational speed of the basket is a result-effective variable.
Answer 6, 11; Final Act. 4. As such, we need not address Appellants’
argument as to whether Wen constitutes analogous art.
Regarding the Bowden reference, we agree with the Examiner that
Bowden is analogous art.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem) or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). See In re Clay, 966 F.2d 656,
658-659 (Fed. Cir. 1992). In order for a reference to be “reasonably
pertinent” to the problem, it must “logically [] have commended itself to an
inventor’s attention in considering his problem.” In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007); see also KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“When a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one.”).
Appellants assert that the field of endeavor of the invention is
purifying silicon and that the problem addressed is the more complete
removal of metallic contaminants as evidenced by the prevention of gray

2 The Examiner has withdrawn reliance upon the Wen reference, which was
used in the Final Rejection dated January 13, 2012. Answer 10–11. As
Appellants have not timely filed a petition to the Director under 37 C.F.R.
§ 1.181, Appellants have waived any argument that the rejection maintained
in the answer must be designated as a new ground of rejection. See
37 C.F.R. § 41.40.
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spots. Appeal Br. 6. Appellants assert that Bowden, which is directed to use
of an immersion wash tank to clean industrial parts, is directed to a different
field of endeavor (cleaning machine parts) and to a different problem.
Appeal Br. 6.
We disagree with the Appellants’ narrow definition of the field of
endeavor and problem to be solved. The claims do not recite the complete
removal of metallic contaminants or the prevention of gray spots. Rather,
the claims are directed to methods of purifying polysilicon fragments in an
etching tank containing a purifying liquid. The Examiner found, and we
agree, that Bowden is also concerned with a technique for cleaning parts in a
porous basket that is immersed in a cleaning liquid, just as the Köppl
reference is also concerned with cleaning items in a porous basket that is
immersed in cleaning liquid. Answer 12. Thus, the claimed invention,
Bowden and Köppl each are directed to the same fundamental process for
cleaning multiple items, i.e., placing the items in a porous basket and
immersing that basket into a circulating or agitated cleaning solution. The
claimed invention, Bowden and Köppl are from the same field of endeavor
and are analogous art. Thus, we agree that with the Examiner that one of
ordinary skill in the art would have found the disclosure of Bowden relevant
not for the specific object that it cleans, but for the technique it uses to clean
those objects. Answer 12.
B. The Teachings of Köppl, Bowden, and Wochner
Appellants assert that Köppl does not disclose, teach, or suggest any
flow velocity, and does not teach rotating the basket or using a plurality of
lifting/lowering cycles (Appeal Br. 7), that Bowden does not teach rotating
a basket to provide a flow velocity of liquid of 100 mm/sec or that flow
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velocity is a result effective variable for removing metallic impurities
(Appeal Br. 8), and that Wochner does not disclose lifting or lowering
baskets into or out of the cleaning liquid for any purpose other than
providing fresh cleaning solution to the basket (Appeal Br. 8–9). These
arguments are not persuasive as one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). With the exception of a flow velocity of greater than 100
mm/sec, the cited art expressly discloses each of the disputed claim
limitations.
Appellants state that there is no teaching in Bowden that flow velocity
is a result effective variable for removing metallic impurities. Appeal Br. 8.
We disagree.
If a particular parameter is recognized as a result-effective variable,
i.e., a variable which achieves a recognized result, it is not inventive to
discover an optimum or workable range. See, e.g., In re Boesch, 617 F.2d
272, 276 (CCPA 1980) (stating that “discovery 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) (stating “where 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”).
The Examiner found that Bowden teaches that the rotational speed of
the porous basket is a result-effective variable because the rotational speed
of the porous basket affects how quickly fresh cleaning liquid can be
brought into contact with the surfaces of the rotated fragment. Answer 6,
11; Final Act. 4 (stating that Bowden teaches that “it is advantageous to
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rotate the porous basket about a horizontal axis such that the parts can be
flushed with cleaning liquid”). That concept is also implicit in the Bowden’s
teaching that the system provides:
a parts cleaning, rinsing and chemical treating system
which provides maximum efficiency in removing grease,
oil, tar, cuttings and other debris from machined parts
and other elements by rotating such parts and elements in
a wash tank in which the liquid is agitated by a turbo
charger.
Bowden, 3:52–58. One having ordinary skill in the art would have
recognized from the above teaching that adding rotation, as opposed having
no rotation, improves the cleaning, rinsing and treating of the items. One
having ordinary skill in the art would also have appreciated that the rate of
rotation and therefor the appropriate flow velocity would have to be
determined for the particular items to be cleaned. Additionally, it is a matter
of common sense, if not common knowledge, that the flow rate of a cleaning
or rinsing solution affects the rate of removal of undesired material from an
item to be cleaned. Appellants’ argument that Bowden does not teach that
flow velocity is a result effective variable for removing metallic impurities is
not persuasive.
Appellants also assert that there is no motivation to combine the
references to arrive at the claimed invention and that it was unpredictable
that the combination of rotating, lifting/lowering and flow velocity >100
mm/s would remove metal contaminants and prevent gray spots. Appeal Br.
9.
Again these arguments are unpersuasive as the claims do not require
any removal of metal contaminants or the prevention of gray spots. As
explained in KSR, in determining whether the subject matter of a patent
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claim would have been obvious, “neither the particular motivation nor the
avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. Rather,
what matters is the objective reach of the claim. If the claim extends to what
is obvious, it is invalid under § 103. Id. Any need or problem in the field of
endeavor can serve as the basis for combing features known in the art.
The Examiner found that Köppl teaches a method of purifying
polysilicon fragments in a tank by containing the fragments within a porous
basket immersed in a liquid in the tank and using a plurality of nozzles to
spray cleaning liquid towards the fragments. Final Act. 3, citing Köppl col.
1, ll. 44–47; col. 1, l. 61–col. 2, l. 15; col. 2, ll. 8–33; col. 2, l. 56–col. 3, l.
20. The Examiner also found that Bowden teaches a method of cleaning
parts in which the parts are contained within a porous basket that is
immersed in a wash tank filled with a cleaning solution and that the
immersed parts are sprayed from nozzles. Final Act. 4, citing Bowden Figs.
3 & 6; col. 2, l. 55–col. 3, l. 5; col. 4, ll. 44–68; col. 5, l. 44–col. 6, l. 28; col.
8, l. 48–col. 9, l. 15. Bowden also teaches that the porous basket is rotated
about a horizontal axis in the wash tank such that the rotational movement of
the porous basket causes parts to be advantageously flushed with cleaning
solution. Final Act. 4, citing Bowden Abstract; col. 8, l. 65–col. 9, l. 15.
The Examiner further found that Wochner teaches a method of immersion
cleaning of polysilicon fragments that involves the multiple lifting and
lowering of a porous container containing polysilicon fragments in out and
out of the cleaning liquid. Final Act. 5.
The Examiner determined, and we agree, that it would have been
obvious to one skilled in the art (1) to modify the method of Köppl by
rotating the porous basket about a horizontal axis within the tank’s liquid in
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view of Bowden’s teaching that it is advantageous to rotate the porous
basket about a horizontal basket such that the parts can be flushed with
cleaning solution, and (2) to modify the method of Köppl in view of Bowden
by performing multiple lifting and lowering steps during the cleaning in
view of Wochner’s teaching that it is preferable to perform the lifting and
lowering steps so that the cleaning liquid can drain out of the porous
container. Answer 5; see also Appeal Br. 9 (Appellants state that “[o]ne
skilled in the art, viewing Wochner, would recognize that . . . complete
lifting/lowering . . . is effective to remove metal impurities to low
levels . . .”). If a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond the skill of one ordinarily skilled in the art.
KSR, 550 U.S at 417.
Even if the Appellants have recognized another advantage that would
flow naturally from following the suggestion of the art, such recognition
cannot be the basis for patentability when the differences would otherwise
have been obvious. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)
(“Although the motivation to combine here differs from that of the applicant,
the motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.”).
Appellants’ remaining arguments have been considered but are not
deemed persuasive.

Claim 21
The Examiner cited Köppl as teaching a method of cleaning
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polysilicon fragments in an etching tank, Izumi as teaching a method of
cleaning parts (semiconductor wafers) immersed in a tank of cleaning liquid,
wherein nozzles located on the bottom of the tank inject gas into the
cleaning fluid forming gas bubbles which remove contaminates, and Weaver
as teaching nozzles that can be used to clean articles by generating a vortex
flow of liquid. Final Act. 7–9. The Examiner determined that it would have
been obvious to modify Köppl by having gas supply nozzles disposed in the
bottom of the tank such that they can inject inert gas into the cleaning liquid
because Izumi teaches the injected gas forms bubbles and contaminates
gather at interfaces between the gas bubbles and the surrounding liquid such
that the contaminates can be removed by the bubbles. The Examiner found
that the injection of gas effects the flow of liquid from more than two
different directions because the gas-injection nozzles spray gas through the
liquid in a multitude of directions from the bottom of the tank and that such
a spray of gas through the liquid would displace liquid in the tank and
contribute to the flow velocity of the liquid. Final Act. 8.
Appellants assert that the Examiner erred in relying upon the Izumi
reference because Izumi is non-analogous art as Izumi is not directed to the
problem of solving gray spots. Appeal Br. 13–14. As explained above, this
argument is unpersuasive as the claims do not recite the prevention of gray
spots. The Examiner found, and we agree, that Izumi is directed to methods
of cleaning substrates, such as semiconductor wafers, in which the substrates
are immersed in a tank of cleaning liquid. Final Act. 8; Izumi ¶¶ 61, 71,
Fig. 5. Gas supply nozzles located in the bottom of the tank inject gas into
the cleaning liquid. Final Act. 8. The gas forms bubbles which remove
undesired contaminants from the surface of the parts. Final Act. 8; Answer
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13. Izumi is relevant not for the specific objects that Izumi cleans, but for
the way that Izumi cleans those objects. Answer 13.
Appellants also argue that one skilled in the art would not be
motivated by Izumi, which uses gas bubbles to remove particulates,
because the contaminants in polysilicon are not particulate in nature.
Appeal Br. 13–14.
We disagree. The Examiner found that Köppl teaches that
particulates are formed during the purification process and that these
particles end up floating on the surface of the immersion bath. Answer 13.
One having ordinary skill in the art would have recognized that Izumi’s
method of using bubbles to grasp and remove undesired particles from the
surface of immersed objects would facilitate the cleaning of polysilicon
fragments. Answer 13.
Appellants further argue that the salient feature of Izumi, the freezing
of the preprocessing liquid onto the wafer substrate being cleaned, was not
included in the rejection and thus, the rejection is improper. Appeal Br. 14–
15 (stating “all the salient features of the references must be included in any
rejection under 35 U.S.C. § 103”). We are not persuaded by this argument
as the Examiner found, and we agree, that the freezing process is not
required to remove particulates, and that even without freezing, Izumi’s
bubbles are reasonably expected to contribute the cleaning of the fragments.
Answer 14–15. In any event, the Examiner relied upon Izumi to show, inter
alia, that the level of ordinary skill in the art includes the knowledge that
injecting gas into the cleaning liquid enhances cleaning ability. Answer 7–8.
Appellants next assert that the Köppl and Izumi references are
physically uncombinable as gas bubbles of Izumi and the cavitation bubbles
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of Köppl are incompatible. Appeal Br. 14. This argument is not persuasive
because, the Examiner found, and Appellants have not persuasively rebutted,
that the configuration of the system so that the use of Izumi's bubbles can be
successfully integrated into Köppl's method is a design/optimization issue
that would be within the skill of one of ordinary skill in the art. Answer 14.
Appellants assert that the flow rate through the Weaver nozzle is not a
result effective variable for liquid impinging upon the polysilicon, because
the flow velocity of the fluid immediately outside the nozzle is unrelated to
the flow velocity on the polysilicon. Appeal Br. 16. Appellants contend that
the flow velocity of the liquid from the nozzle will be rapidly lowered by the
surrounding fluid in the tank Weaver does not teach or suggest that the
liquid flow velocity impinging upon the polysilicon is a result effective
variable. Appeal Br. 15–16.
We are not persuaded by this argument. Appellants own Specification
describes measuring the flow velocity as it emerges from the nozzle. Spec.
p. 5, ll. 17–19 (“The etching mixture emerges from said nozzles at a velocity
of greater than 100 mm/sec.”); see also Spec. p. 6, ll. 27–31 (“exit velocity
of 100 mm/sec”). The Examiner found that Weaver teaches that the flow
rate at which nozzles eject liquid is a result effective variable because the
flow effects the ability of the ejected liquid to form the desired vortex flow.
Answer 10; Final Act. 9–10 citing Weaver, col. 1, 30–52; col. 2, 37–53; col.
3, 6–25 and 50– 64; Claims 1 and 4. Additionally, that the flow rate of a
cleaning mixture would affect the ability to clean or the removal rate of
contaminants is a matter of common sense, if not common knowledge. One
having ordinary skill in the art would recognize the flow velocity of the
cleaning liquid is a result effective variable.
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The Appellants also assert that claim 21 requires that the directional
flow of liquid be produced by gas bubbles and that Weaver cannot teach or
suggest this limitation because there are no gas bubbles in Weaver. Appeal
Br. 16. This argument is unpersuasive as the Examiner relies upon Izumi,
not Weaver, for disclosing a flow of purifying liquid that is affected by the
injection of air. See, e.g., Final Act. 8 (“Izumi teaches enhancing the
cleaning by having gas supply nozzles [that] inject gas in a non-direction
manner into the cleaning liquid.).” One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. Merck, 800 F.2d at 1097. As stated by the
Examiner, “the injection of gas is considered to effect the flow of liquid
from more than two different directions because the gas-injection nozzles
spray gas through the liquid from a multitude of directions from the bottom
of the tank, and such a spray of gas through liquid would displace liquid in
the tank and contribute to the flow velocity of the liquid.” Final Action 8;
see also Answer 15–16 (“both the injection of gas from the gas-spraying
nozzles (of the type taught by Izumi) and the injection of liquid from the
liquid spraying nozzles (of the type taught by Weaver) are considered to
contribute to effecting the flow of liquid against the polysilicon fragments
from more than two directions.)

Secondary Considerations of Non-Obviousness
To the extent Appellants assert unexpected results as it surprising that
gray spots may be avoided by combining lifting/lowering and rotation of the
basket containing polysilicon, provided that the flow velocity of the etchant
impinging upon the polysilicon is > 100 mm/sec, (Appeal Br. 9), we do not
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find this argument persuasive. The avoidance of gray spots is not a required
result of the claimed method. All the claims require is that the polysilicon
be “purified” which broadly means to remove contaminants. Spec. p. 1, ll.
7–20. Additionally, attorney argument is insufficient to establish
unexpected results. Appellants’ brief does not direct us to evidence
establishing that the result would have been unexpected or surprising to one
having ordinary skill in the art. In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) (in order to establish unexpected results, an applicant must establish
that the results said to be obtained by the invention actually are obtained by
the invention; it is not enough to show results are obtained which differ from
those obtained in the prior art—any difference must be shown to be an
unexpected difference).
Appellants’ arguments of long felt need based on the age of the
references has been considered but is not deemed persuasive. See, e.g., Ex
parte Meyer, 6 USPQ2d 1966, 1968 (BPAI 1988) (length of time between
issuance of prior art patents relied upon, 1920 and 1976, was not persuasive
of unobviousness). Additionally, Appellants’ brief does not direct us to
sufficient evidence establishing that the problem has existed in the art for a
long time that others with knowledge of the prior art have been unsuccessful
in solving and that the invention, as claimed, has solved the problem. See
Appeal Br. 4; In re Allen, 324 F.2d 993, 997 (CCPA 1963) (While
appellant’s arguments imply that there may be been an unsolved problem in
the art, an allegation to this effect is not evidence of unobviousness unless it
is shown, as was not done here, that [1] the widespread efforts of [2] skilled
workers [3] having knowledge of the prior art [4] had failed to find a
solution to the problem[,] citing Toledo Pressed Steel Co. v. Standard Parts,
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Inc., 307 U.S. 350, 356, 59 S. Ct. 897, 899 (1939) (“[b]ut it does not appear
that either was familiar with the relevant prior art”).)
.
Appellants remaining arguments also have been considered but are
not deemed persuasive.

DECISION
Because the Examiner presents a prima facie case for the obviousness
of Appellants’ claimed invention, which is not persuasively rebutted by
Appellants, we agree with the Examiner that based on all the evidence the
claimed methods would have been obvious.
We thus affirm the Examiner’s decision rejecting claims 19–21 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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