Ex Parte Freer et al

Patent Trial and Appeal Board

Mar 16, 2016

11732603 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111732,603 0410312007
119049 7590 03/18/2016
MPG, LLP and Lam Research Corp.
Albert Penilla
710 Lakeway Drive
Suite 200
Sunnyvale, CA 94085
FIRST NAMED INVENTOR
Erik M. Freer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LAM2P595 3748
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
03/18/2016 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):
lamptomail@mpiplaw.com
mpdocket@mpiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK M. FREER, JOHN M. DE LARIOS, MICHAEL RA VKIN,
MIKHAIL KOROLIK, and FRITZ C. REDEKER 1
Appeal2014-005763
Application 11/732,603
Technology Center 1700
Before TERRY J. OWENS, PETERF. KRATZ, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 4, 7-11, 13, 14, 16, 17, 36, 38, and 39. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Lam Research
Corporation. Br. 3.
Appeal2014-005763
Application 11/732,603
BACKGROUND
The subject matter on appeal relates to a method for cleaning the
surface of a semiconductor wafer. Spec. i-f 6; Claim 1. Claim 1 is
reproduced below from page 11 (Claims Appendix) of the Appeal Brief:
1. A method for cleaning, comprising:
providing a wafer having a surface, the surface having a particle
thereon;
providing a cleaning media on the surface, the cleaning media
including a liquid component and one or more dispersed
coupling elements suspended therein, wherein the one or more
dispersed coupling elements are defined from visco-elastic fatty
acids having a concentration that exceeds solubility limit of the
liquid component; and
applying external energy periodically in a direction that is
parallel to the surface of the wafer to the cleaning media such
that a periodic shear stress that is tangential to the surface of the
wafer within the cleaning media is created, the external energy
being ultrasonic energy having a frequency of approximately 50
Hz to approximately 100 KHz;
wherein the period shear stress imparts a momentum and drag
forces on at least one of the one or more of the coupling elements,
the drag forces causing an interaction between the at least one of
the one or more coupling elements and the particle to remove the
particle from the surface.
REJECTIONS ON APPEAL2
1. Claims 1, 3, 4, 7-11, 13, 14, 16, 17, 36, 38, and 39 are rejected
under 35 U.S.C. § 112, i-f 2, as indefinite.
2 In the Examiner's Answer, the Examiner withdraws a rejection under 35
U.S.C. § 112, i-f 1, of claims 38 and 39. Ans. 6.
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Appeal2014-005763
Application 11/732,603
2. Claims 1, 3, 4, 7-11, 13, 14, 16, 17, 36, 38, and 39 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Kishimoto (JP 11-102881,
published April 13, 1999) in view of Patel (US 5,925,182, issued July 20,
1999).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we sustain the rejections for reasons set forth by
the Examiner in the Answer. See generally Ans. 2-10. We add the
following for emphasis and completeness.
Rejection 1
The Examiner concludes that the following terms independently
render all of the claims on appeal indefinite under 35 U.S.C. § 112, i-f 2:
(1) "visco-elastic fatty acids," (2) "the one or more of the coupling
elements" (appearing in the "wherein the period shear stress imparts"
limitation of claim 1 ), and (3) "fatty acids having a concentration that
exceeds solubility limit of the liquid component." Ans. 2-3.
The Examiner concludes that the term "visco-elastic fatty acids"
renders claim 1 indefinite "because it is not clear what is referenced as
'visco-elastic' fatty acids." Id. at 2. The Examiner explains that the term "is
not an art recognized term with respect to acids, and that the Specification
"does not define this term" or "teach what is considered as 'visco-elastic
fatty acids."' Id. at 7. In response, the Appellants quote a lengthy paragraph
from the Specification which appears to provide certain examples of "visco-
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Appeal2014-005763
Application 11/732,603
elastic materials" and fatty acids, and they state "that sufficient disclosure
and guidance is provided to one of skill in the art to understand the meaning
of a visco-elastic fatty acid, in the context of the claims." Br. 7.
We are not persuaded by that argument because it does not
meaningfully respond to the Examiner's rationale. The mere fact that the
Specification may provide examples that constitute visco-elastic fatty acids
does not, of itself, establish that a person of ordinary skill in the art would
understand the full scope of the term. The Appellants do not, for example,
rebut the Examiner's finding that the term "is not an art recognized term,"
Ans. 7, nor do they explain why or how a person of ordinary skill in the art
would be able to distinguish visco-elastic fatty acids from non-visco-elastic
fatty acids. Cf Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2123 (2014) (in a litigation context, to comply with§ 112, i-f 2, claims must
"inform those skilled in the art about the scope of the invention with
reasonable certainty."). The Appellants' unembellished argument provides
no basis to reject the Examiner's conclusion. We therefore sustain the
rejection.
We likewise sustain the§ 112, i-f 2 rejection on the basis of the other
two terms that the Examiner addresses. The Examiner concludes that the
term "the one or more of the coupling elements" is indefinite because it
lacks antecedent basis. The Appellants, stating that they "are willing to later
amend the claims ... to provide literal antecedent basis," appear to
acquiesce to the Examiner's position. See Br. 7. We therefore sustain the
§ 112, i-f 2 rejection on the basis of that term.
Concerning the term "fatty acids having a concentration that exceeds
solubility limit of the liquid component," the Appellants fail to contest the
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Application 11/732,603
Examiner's rejection. See id. at 6-7. Therefore, we likewise sustain the
§ 112, i-f 2 rejection on the basis of that term.
Rejection 2
The Appellants do not argue the claims separately, so the claims stand
or fall together. See 37 C.F.R. § 41.37(c)(l)(iv). We treat claim 1,
reproduced above, as representative of the rejected claims.
The Examiner finds that Kishimoto teaches a method of cleaning
comprising each element of claim 1 "except for the recitation of the use of
the fatty acids." Ans. 3. The Examiner finds that Patel teaches "the use of
solid fatty acids together with solid particles, including polymer particles ...
in a liquid carrier provides a stable suspension of the solid particles." Id. at
4. The Examiner further finds that Patel "recites the same fatty acids ... as
disclosed by the specification of the instant application." Id. The Examiner
concludes that "it would have been obvious ... to provide solid fatty acids
into the cleaning fluid of [Kishimoto] in order to make the fluid a stable
suspension in order to improve the action of the cleaning fluid." Id.
The Appellants argue that Kishimoto "fails to teach that the cleaning
liquid contains any 'dispersed coupling elements' that 'are defined from
visco-elastic fatty acids having a concentration that exceeds solubility limit
of the liquid component."' Br. 8. That argument is not persuasive because
the Examiner relies on Patel for the teaching of fatty acids. See Ans. 4. The
Appellants do not argue that the fatty acids of Patel do not constitute "visco-
elastic fatty acids" or "dispersed coupling elements."
The Appellants argue that Kishimoto' s disclosure of abrasive grains
"is not in keeping with the claimed use of a visco-elastic fatty acid." Br. 8.
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Appeal2014-005763
Application 11/732,603
Claim 1, however, uses the open-ended term "including" and does not
exclude the use of a cleaning media that includes abrasive grains.
Accordingly, that argument is not persuasive.
The Appellants argue that Patel "fails to teach anything regarding the
concentration of the solid fatty acids in the stable liquid suspension
composition." Id. However, the Examiner finds that the fatty acids of Patel
"are present in the suspension in the solid state," see, e.g., Patel at Abstract,
and, therefore, that "they are present in the concentration that exceeds the
solubility limit of the fatty acids in the liquid carrier." Ans. 4. The
Appellants fail to address that finding and, therefore, fail to establish
reversible error in it. Cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("it has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections" (citing Ex parte Frye, 94 USPQ2d
1072 (BPAI 2010) (precedential))).
The arguments presented by the Appellants do not apprise us of
reversible error in the Examiner's obviousness rejection. We therefore
sustain the rejection.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 3, 4, 7-11, 13, 14,
16, 17, 36, 38, and 39 under both 35 U.S.C. § 112, i-f 2, and under 35 U.S.C.
§ 103(a).
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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