Ex Parte YU

Board of Patent Appeals and Interferences

Sep 25, 2002

08846196 (B.P.A.I. Sep. 25, 2002)

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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today was not written for publication and is not binding
precedent of the Board.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. 27

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte CONRAD YU
______________

Appeal No. 2002-1768
Application 08/846,196
_______________

ON BRIEF
_______________

Before WARREN, WALTZ and LIEBERMAN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellant, in the brief, and based on our
review, find that we cannot sustain the rejection of appealed claims 1 through 10, 12 through 20
and 22 through 26,1 all of the claims in the application, under 35 U.S.C. § 103(a) as being
unpatentable over Ohki et al., Cook et al. and Gotoh et al. (Gotoh).2
We find that, when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d 1367, 1372, 54
USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,

1 See the amendments of September 27, 1999 (Paper No. 7).
2 Answer, pages 3-6.
Appeal No. 2002-1768
Application 08/846,196
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1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989), the plain language of appealed independent claim 1 requires “rinsing the wafer with an
acetic acid solution immediately after etching to stop further etching and preventing uneven
etching” (emphasis supplied). It is clear from the specification that the term “immediately” has
its customary dictionary meaning of “[w]ithout intermediary; directly; . . . [w]ithout delay.”3
The dispositive issue in this appeal is whether one of ordinary skill in this art would have
found in Gotoh a teaching to rinse the etched wafer with an acetic acid solution immediately after
the etching step. It is well settled that a reference stands for all of the specific teachings thereof
as well as the inferences one of ordinary skill in this art would have reasonably been expected to
draw therefrom, see generally, In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83
(Fed. Cir. 1992), presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226
USPQ 771, 774 (Fed. Cir. 1985).
We have carefully considered the teachings of Gotoh in light of the positions advanced by
the examiner (answer, pages 4, 5, 6, 7-8 and 8-9) and appellant (brief, pages 7-8). Based on the
entire disclosure of the reference, we find no disclosure therein, including the passages upon
which the examiner relies, that would have provided one of ordinary skill in this art with the
teaching or inference that the etched wafer was rinsed with an acetic acid solution immediately
after the etching step. Indeed, as disclosed by Gotoh, there is at least one step (e.g., col. 2, lines
3-6), if not two steps (e.g., col. 5, lines 13-22), between the etching step and the application of
the acetic acid solution in a rinsing step.

3 The American Heritage Dictionary, Second College Edition 643 (Boston, Houghton Mifflin
Company, 1982)
Appeal No. 2002-1768
Application 08/846,196
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The examiner’s decision is reversed.
Reversed

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )

John P. Wooldridge
Appeal No. 2002-1768
Application 08/846,196
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Lawrence Livermore National Laboratory
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