Taiwan Semiconductor Manufacturing Company, Ltd.

Patent Trials and Appeals Board

May 3, 2021

2020002847 (P.T.A.B. May. 3, 2021)

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.
14/087,367 11/22/2013 Hui-Chi Huang TSM13-1120 7767
43859 7590 05/03/2021
SLATER MATSIL, LLP/TSMC
17950 PRESTON ROAD, SUITE 1000
DALLAS, TX 75252
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
05/03/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUI-CHI HUANG

Appeal 2020-002847
Application 14/087,367
Technology Center 1700
____________

Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–14, 21–25, 27, and 28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Taiwan Semiconductor Manufacturing
Co., Ltd. Appeal Br. 2.
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2
Appellant’s invention is directed to a method for performing post
Chemical Mechanical Polish (CMP) cleaning that avoids the use of a brush
in the cleaning process (Spec. ¶¶ 13, 28).
Claim 1 is representative of the subject matter on appeal:
1. A method comprising:
picking up a wafer using a wafer head comprising a small
part, and a large part having a diameter greater than a diameter
of the small part, wherein the small part has a diameter smaller
than a diameter of a top diameter of a cleaning tank;
spinning a cleaning solution contained in the cleaning
tank by rotating the cleaning tank, wherein the cleaning tank is
rotated about an axis that is perpendicular to a top surface of the
cleaning solution, and residues on the wafer fall to a bottom of
the cleaning tank;
submerging the wafer and a portion of the small part of
the wafer head into the cleaning solution, wherein the large part
has a bottom in contact with an inner sidewall of the cleaning
tank when the wafer and the portion of the small part of the
wafer head are submerged, with the cleaning solution spun
when the wafer is in the cleaning solution, wherein the large
part remains to be outside of the cleaning solution;
rotating the wafer along with the small part and the large
part; and
after the submerging the wafer into the cleaning solution,
retrieving the wafer out of the cleaning solution.

Appellant appeals the following rejections:
1. Claims 1 and 5 are rejected under 35 U.S.C. § 103 as
unpatentable over Aiba (JP H104076 A, pub. Jan. 6, 1998 (as
translated)) in view of Hsieh (US 6,539,960 B1, issued Apr. 1,
2003), Fredenberg (US 2011/0278162 A1, pub. Nov. 17, 2011),
Lin (US 2005/0155869 A1, pub. July 21, 2005), Namerikawa
(US 2002/0185150 A1, pub. Dec. 12, 2002), and Huang (US
2008/0047589 A1, pub. Feb. 28, 2008).
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2. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Aiba in view of Hsieh, Fredenberg, Lin, Namerikawa, Huang,
and Bergman (US 5,232,511, issued Aug. 3, 1993).
3. Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over
Aiba in view of Hsieh, Fredenberg, Lin, Namerikawa, Huang,
and Verhaverbeke (US 2002/0029788 A1, pub. Mar. 14, 2002).
4. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Aiba in view of Hsieh, Fredenberg, Lin, Namerikawa, Huang,
Yin (US 2008/0142055 A1, pub. June 19, 2008), and Ohmori
(US 5,379,785, issued Jan. 10, 1995).
5. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Aiba in view of Hsieh, Fredenberg, Lin, Namerikawa, Huang,
and Inoue (US 2008/0314870 A1, pub. Dec. 25, 2008).
6. Claims 8 and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Aiba in view of Inoue and Namerikawa.
7. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Aiba in view of Inoue, Namerikawa, Lee (US 6,235,147 B1,
issued May 22, 2001), and Javorik (US 4,836,684, issued
June 6, 1989).
8. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Aiba in view of Inoue, Namerikawa, and Lin.
9. Claims 12–14 are rejected under 35 U.S.C. § 103 as
unpatentable over Aiba in view of Inoue, Namerikawa, and
Stowell (US 2005/0178402 A1, pub. Aug. 18, 2005).
10.Claims 21–24 are rejected under 35 U.S.C. § 103 as
unpatentable over Aiba in view of Inoue, Namerikawa, Lee,
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Burkhardt (US 5,059,330, issued Oct. 22, 1991), Yin, Javorik,
and Lin.
11.Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable
over Aiba in view of Inoue, Namerikawa, Lee, Burkhardt, Yin,
Javorik, Lin, and Hsieh.
12.Claim 27 is rejected under 35 U.S.C. § 103 as unpatentable
over Aiba in view of Inoue, Namerikawa, and Hsieh.
13.Claim 28 is rejected under 35 U.S.C. § 103 as unpatentable
over Aiba in view of Inoue, Namerikawa, Fredenberg, Lin, and
Huang.
14.Claim 25 is rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
15.Claim 25 is rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the subject matter
with the inventor or a joint inventor regards as the invention.
With regard to the prior art rejections, Appellant argues the subject
matter common to independent claims 1, 8, and 21 (Appeal Br. 9–16).
Appellant makes substantially the same arguments against claims 1, 8, and
21. Id. Therefore, we select claim 1 as representative of the claims argued
on appeal. 37 C.F.R. § 41.37(c)(1)(iv). Any claim not argued separately
with regard to the prior art rejections will stand or fall with our analysis of
the rejection of claim 1. Appellant separately argues rejections (14) and (15)
of claim 25 for lack of written description and indefiniteness (Appeal Br.
16).

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FINDINGS OF FACT & ANALYSIS
Rejection (1): Claim 1
The Examiner findings and conclusions regarding the combined
teachings of Aiba, Hsieh, Fredenberg, Namerikawa, Lin, and Huang are
located on pages 4–6 of the Final Action.
Appellant argues that Namerikawa teaches away from the claim 1
requirement that “residues on the wafer fall to a bottom of the cleaning tank”
(Appeal Br. 9). Appellant argues that Namerikawa teaches stirring the
cleaners in the cleaning tank 21 and the ordinary meaning of stirring means
that residue is prevented from falling to the bottom of the cleaning tank
(Appeal Br. 9). Appellant contends that if the residue is left to settle in
Namerikawa, then it would not be absorbed by the contamination absorbing
layer 32 (Appeal Br. 9–10). Appellant further argues that Namerikawa does
not rotate the container so that the axis of rotation is perpendicular to the
surface of the cleaning material as shown by Namerikawa’s Figure 8
(Appeal Br. 10). Appellant argues the Examiner improperly shifts the
burden to Appellant without meeting the initial burden of establishing prima
facie obviousness (Appeal Br. 11). Appellant contends claim 1 requires
“picking up a wafer using a wafer head comprising a small part, and a large
part . . . submerging the wafer . . . wherein the large part has a bottom in
contact with an inner sidewall of the cleaning tank” (Appeal Br. 11).
Appellant argues that the Examiner’s reliance on Huang to teach a “large
part ha[ving] a bottom in contact with an inner sidewall of the cleaning tank”
is misplaced (Appeal Br. 11). Appellant argues that Huang’s cover 365 is
not a wafer-head for picking up a wafer as in the claim or that Huang’s cover
has a large part and small part as recited in claim 1 (Appeal Br. 11–12).
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Appellant contends the Examiner’s finding that Aiba teaches rotating the
cleaning fluid about an axis perpendicular to the surface of the cleaning
solution is misplaced (Appeal Br. 13). Appellant argues the Examiner’s
rejection based upon the combined teachings of Namerikawa and Aiba, not
Aiba alone (Appeal Br. 13). Appellant contends that Namerikawa’s
teaching away from rotating around the cleaning fluid around an axis
perpendicular to the cleaning fluid surface cannot be ignored in favor of
Aiba’s teachings alone (Appeal Br. 13).
Appellant’s arguments are unpersuasive because the test for
obviousness is not whether the features of a secondary reference (i.e.,
Namerikawa) may be bodily incorporated into the structure of the primary
reference (i.e., Aiba), rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner finds that Aiba
teaches a method of cleaning a wafer that includes rotating the cleaning fluid
in a direction perpendicular to the surface of the cleaning fluid using jets to
create the circulation (Final Act. 5–6). The Examiner finds that Namerikawa
teaches a method of ultrasonically cleaning objects by immersing the objects
in the cleaning fluid and rotating the cleaning tank to move the cleaning
fluid contained therein (Final Act. 5). The Examiner determines that it
would have been obvious to substitute Namerikawa’s movement of the
cleaning tank for Aiba’s jets to create the circulation pattern in the cleaning
fluid as both equivalent mechanisms for rotating and agitating the cleaning
solution (Final Act. 5). In other words, the Examiner is not proposing to
bodily incorporate Namerikawa’s entire control mechanism that includes
swinging the tank from side-to-side in addition to rotating the tank with
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Aiba’s method (Namerikawa ¶ 51). Rather, the Examiner proposes
modifying Aiba to use cleaning tank rotation to circulate the cleaning fluid
in the tank as taught by Namerikawa. Appellant does not contest the
Examiner’s finding that Aiba teaches that the jets may be used to move the
liquid in a direction perpendicular direction (Appeal Br. 13; Final Act. 5–6).
Accordingly, once the substitution of equivalent mechanism is made
in Aiba, the turning of the cleaning tank would have resulted in the fluid
circulating around an axis in a direction perpendicular to the top surface of
the cleaning fluid. We do not find Namerikawa to discourage rotating
around an axis perpendicular to the cleaning fluid surface. Rather,
Namerikawa teaches the vessel may be stirred by “rotation, swinging, or the
like” (¶ 47; Ans. 5–6). Namerikawa further describes embodiments where
the vessel is swung, rotated, and both rotated and swung (¶¶ 47–51).
Although the embodiment of Figure 6 shows that the rotation of a tilted
vessel holding the cleaning fluid, the broader disclosure in paragraph 47 of
Namerikawa does not limit the stirring means to only the embodiments
depicted in Figures 5 to 8. We do not find that Namerikawa teaches away
from rotating the cleaning tank about an axis that is perpendicular to the
surface of the cleaning fluid.
We are unpersuaded by Appellant’s argument that Namerikawa does
not teach that the residue removed from the wafer falls to the bottom of the
cleaning of tank. Namerikawa teaches that the cleaning fluid is composed of
a cleaning layer 31 and a contaminant absorbing layer 32 (¶¶ 39, 40; Fig. 8).
Namerikawa teaches that the contamination absorbing layer and the cleaning
layer circulate and reflux between the two layers so as to absorb
“contaminating substances dropped in the cleaning layer” (¶ 40 (emphasis
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added)). Namerikawa plainly teaches that that contaminants removed from
the object being ultrasonically treated drop or fall into the cleaning layer and
are absorbed by the contaminant absorbing layer of the cleaning fluid (¶ 40).
In other words, Namerikawa recognizes that contaminants removed from an
object fall to the bottom of the container after removal from the object. The
Examiner further finds Lin teaches that contaminants removed from a wafer
fall to the bottom of the cleaning tank after removal (Final Act. 6).
Appellant does not dispute this finding regarding Lin (Appeal Br. generally).
The Examiner correctly finds that Appellant circulates (e.g., stirs)
fluid in the cleaning tank and gravity fields fall to the bottom of the cleaning
tank (Ans. 4; Spec. ¶¶ 23, 27). The Examiner finds that once Namerikawa’s
step of rotating the cleaning tank to circulate the cleaning fluid is used in
Aiba’s method, the result of having gravity draw particles removed from the
wafer through the circulating fluid toward the bottom of the tank would have
occurred as Appellant discloses (Ans. 4). As noted above, Namerikawa
discloses that contaminants are dropped into the cleaning fluid at the bottom
of the tank. Namerikawa may teach the contaminant absorbing layer
removes the contaminant dropped in the cleaning layer, however, such a
teaching does not diminish that it is known that where a contamination
absorbing layer as in Namerikawa is not used, the removed contaminant or
residue would fall to the bottom of the vessel, even if the cleaning solution is
stirred.
Appellant’s arguments regarding Huang not teaching a wafer head are
not persuasive. The Examiner correctly finds that the rejection is based
upon Fredenberg teaching a wafer head having a smaller diameter portion
for holding the wafer and a larger diameter portion (Ans. 6–7). Huang is
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relied upon by the Examiner to teach that it is known in the art of cleaning
tanks to have a top/cover of a cleaning tank in contact with the tank and that
contact between the top/cover and the walls of the cleaning tank during
rotation is known in the art (Ans. 7). Based on this teaching, the Examiner
concludes that it would have been obvious to have the wafer head of Aiba as
modified by Hsieh, Fredenberg, Lin, and Namerikawa to be in contact with
the cleaning tank during rotation with predictable results (Ans. 7). Appellant
has not shown reversible error in these findings or conclusion of the
Examiner.
Appellant argues the Examiner’s finding that submerging the small
part of the wafer head holding the wafer is a design choice within the skill of
the ordinary artisan absent evidence of significance is an improper practice
in rejecting a claim (Appeal Br. 13).
The Examiner finds that submerging a portion of the wafer holder
such that only the smaller diameter part holding the wafer is submerged is
well within the design choice of one of ordinary skill in the art absent
persuasive evidence that the particular configuration is significant (Ans. 8;
Final Act. 5). The Examiner finds that Aiba submerges a portion of the
wafer head (Ans. 8).
Appellant responds that the Examiner’s requirement for showing
significance in submerging only the smaller diameter portion of the wafer
head and the wafer is arbitrary and unreasonable (Reply Br. 5).
Appellant does not dispute the Examiner’s finding that Aiba teaches
submerging the wafer head in the cleaning tank so that the wafer mirror
surface 8a is fully submerged while the back of the wafer 8b is protected by
gas flow from gas supply opening 10a (Aiba Fig. 1, ¶ 20). The Examiner
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further finds and Appellant does not dispute that Fredenberg teaches a wafer
head having a smaller diameter portion for holding a wafer and a larger
diameter region (Final Act. 4–5). The Examiner finds that Lin teaches
immersing a wafer head in a cleaning solution to remove particles from the
surface of a wafer (Final Act. 5). Based on these findings the Examiner
reasonably determined that it would have been within the level of skill in the
art to submerge the smaller diameter portion of a wafer head that holds the
wafer in order to permit the wafer surface to be cleaned (Final Act. 5). We
understand the Examiner’s statement about a showing of significance in the
particular configuration to mean that Appellant has not provided any
evidence of unexpected results in the particular method step of partial
submersion of the portion of the wafer head holding the wafer. The
Examiner merely states that the teachings of the prior art (i.e., Aiba,
Fredenberg, Lin) would have suggested that such a wafer submersion step
would have been obvious. The Examiner’s statement regarding an absence
of significance recognizes that no evidence or argument of unexpected
results has been alleged or proffered. The Examiner’s rejection is based on
what the teachings of the references would have suggested to a person of
ordinary skill in the art.
On this record, we affirm the Examiner’s § 103 rejections (1) to (13).

REJECTIONS (14) AND (15): 35 U.S.C. § 112
Claim 25 depends from claim 21 and recites “wherein the wafer is
rotated about an additional axis, with the axis and the additional axis being
parallel to each other.” Claim 21 recites, in relevant part, “the cleaning tank
is rotated about an axis.” Under the doctrine of claim differentiation, the
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additional axis of rotation recited in claim 25 must be different and distinct
from the axis of rotation of the cleaning tank recited in claim 21 in order for
claim 25 to be further limiting in scope. See Nazomi Commc'ns, Inc. v. Arm
Holdings, PLC., 403 F.3d 1364, 1370 (Fed. Cir. 2005) (“[C]laim
differentiation ‘normally means that limitations stated in dependent claims
are not to be read into the independent claim from which they depend.’”
(quoting Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968,
971–72 (Fed. Cir. 1999))).
The Examiner rejects claim 25 under § 112(a) for lack of written
description and § 112(b) as being indefinite. The Examiner finds that no
support can be found for the additional axis about which the wafer rotates is
parallel to the axis of rotation of the cleaning tank (Final Act. 3). The
Examiner also finds claim 25 indefinite because it is unclear what is meant
by the claim language (Final Act. 3). The Examiner explains that if
Appellant is attempting to claim the axis and additional axis are offset, such
would raise a written description issue (Final Act. 3).
Appellant argues Figure 5 shows two axes that overlap each other and
the axes are also parallel to each other (Appeal Br. 16). Appellant argues
that the two axes may overlap (being the same axis) as shown in Figures 1
and 4–8 (Appeal Br. 16). Appellant contends that overlapping axes would
have been parallel2 (Appeal Br. 16).

2 If two lines overlap each other, then mathematically they are considered
coincident lines. Coincident lines cannot be parallel because each line
shares all points in common. See https://www.storyofmathematics.com/
coinciding-lines (last visited April 28, 2021) (“Coinciding lines are basically
2 lines that completely lie on one another. There [sic They are] are neither
parallel nor perpendicular but are completely identical. When such lines are
graphed, they appear as one . . ..”).
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The Examiner responds that if two axes overlap each other and are
also parallel to each other, then they are on the same axis (Ans. 9). The
Examiner finds that under such an interpretation, there would be no
“additional axis” because there would have been a single axis (Ans. 9). The
Examiner explains that the only way to have a cleaning tank with an axis
and a wafer head with an additional axis that are parallel to one another
would be where the axis and additional axis are offset from one another (i.e.,
two parallel axes). We agree.
Appellant’s Figure 5 shows the vacuum head 26 and the cleaning tank
20 rotating in opposite direction about the same axis (Spec. ¶ 24). If the
axes are overlapping as argued by Appellant, then the axes form a single
axis. In other words, there would be no “additional axis” as recited in claim
25. Claim 25 is indefinite in that we cannot construe its scope as presently
written. Claim 25 also lacks written description because Appellant has not
shown possession of a wafer rotated about an additional axis that is distinct
from the axis of rotation of the cleaning tank, wherein each axis is parallel to
each other.
On this record, we affirm the rejections of claim 25 under 35 U.S.C.
§ 112(a) rejection for lack of written description and under 35 U.S.C.
§ 112(b) as being indefinite.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5 103 Aiba, Hsieh, Fredenberg, Lin,
Namerikawa, Huang
1, 5
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2 103 Aiba, Hsieh, Fredenberg, Lin,
Namerikawa, Huang,
Bergman
2
3 103 Aiba, Hsieh, Fredenberg, Lin,
Namerikawa, Huang,
Verhaverbeke
3
6 103 Aiba, Hsieh, Fredenberg, Lin,
Namerikawa, Huang, Yin,
Ohmori
6
7 103 Aiba, Hsieh, Fredenberg, Lin,
Namerikawa, Huang, Inoue
7
8, 11 103 Aiba, Inoue, Namerikawa 8, 11
9 103 Aiba, Inoue, Namerikawa,
Lee, Javorik
9
10 103 Aiba, Inoue, Namerikawa,
Lin
10
12–14 103 Aiba, Inoue, Namerikawa,
Stowell
12–14
21–24 103 Aiba, Inoue, Namerikawa,
Lee, Burkhardt, Yin, Javorik,
Lin
21–24
25 103 Aiba, Inoue, Namerikawa,
Lee, Burkhardt, Yin, Javorik,
Lin, Hsieh
25
27 103 Aiba, Inoue, Namerikawa,
Hsieh
27
28 103 Aiba, Inoue, Namerikawa,
Fredenberg, Lin, Huang
28
25 112(a) Written Description 25
25 112(b) Indefiniteness 25
Overall
Outcome
1–3, 5–14,
21–25, 27,
28

TIME PERIOD FOR RESPONSE
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED