Ex Parte Freer et al

Patent Trial and Appeal BoardDec 5, 2012

11641362 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/641,362 12/18/2006 Erik M. Freer LAM2P581 8555 25920 7590 12/06/2012 MARTINE PENILLA GROUP, LLP 710 LAKEWAY DRIVE SUITE 200 SUNNYVALE, CA 94085 EXAMINER GOLIGHTLY, ERIC WAYNE ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 12/06/2012 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 ERIK M. FREER, JOHN M. de LARIOS, MICHAEL RAVKIN, MIKHAIL KOROLIK, KATRINA MIKHAYLICHENKO and FRITZ C. REDEKER ____________ Appeal 2011-007055 Application 11/641,362 Technology Center 1700 ____________ Before ANDREW H. METZ, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. METZ, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 8 through 15, 21, 22, 31 and 32, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2011-007055 Application 11/641,362 2 THE INVENTION During the manufacture of semiconductor devices semiconductor wafers are exposed to various types of contaminants, including particulates. Contaminants on the surface of such wafers can render the devices within the vicinity of the contamination inoperable. Because the size of the contamination is often on the same order of the critical dimension of the features on the wafer it is difficult to remove such contamination without adversely affecting the features on the wafer. Appellants resolve this problem by providing a stable cleaning solution that can elastically hold solid materials in suspension. The solution comprises a continuous solution medium including a polymeric macromolecule which forms a physical network that give the solution a finite yield stress. When deformed with stresses below the yield stress value the solution behaves as an elastic. When stress above the yield stress value is applied to the solution it behaves like a fluid. The physical network stabilizes the cleaning solution by keeping particles suspended therein suspended when the yield stress value is not exceeded but permits the network to act as a fluid when the yield stress value is exceeded. The polymeric macromolecules give the solution elasticity which provides a normal force to the wafer surface being cleaned which promotes solid-wafer contact and better contamination removal. Sp. [0008]. These types of solutions are generally denominated in the art as viscoplastic fluids or “Bingham plastics.” Sp. [0024], [0027] and [0031]. Appeal 2011-007055 Application 11/641,362 3 Claim 8 is adequately representative of the appealed subject matter and is reproduced below for a more facile understanding of the claimed invention. 8. A method for using a solution for cleaning a substrate, comprising: providing a solution in a container, the solution being mixed from at least a continuous medium, a polymer material, and a solid material, the polymer material in the solution imparting a finite yield stress to the solution, such that the solution is maintained in a stable elastic gel form, the stable elastic gel form being configured to hold the solid material in place and prevent the solid material from moving in the solution and forming sedimentation if stresses less than the finite yield stress is imparted on the solution after synthesis of the solution and during any storage of the solution; applying at least a minimum shear stress on the solution, the minimum shear stress being at least greater than the finite yield stress so that the stable elastic gel exhibits fluid-like behavior; flowing the solution from the container after imparting the minimum shear stress, the solution that is flown from the container has a mixed consistency of the solid material in the solution; and applying the solution to a preparation system for application to a surface of the substrate. The references of record which are being relied on by the Examiner as evidence of obviousness are: Woollard et al. (Woollard) US 6,042,885 Mar. 28, 2000 Boyd et al. (Boyd) US 2004/0069319 A1 Apr. 15, 2004 Montierth et al. (Montierth) US 2004/0159335 A1 Aug.19, 2004 Fine et al. (Fine) US 2004/0242442 A1 Dec. 02, 2004 Appeal 2011-007055 Application 11/641,362 4 THE REJECTIONS Claim 21 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to satisfy the “written description” requirement of the first paragraph. Claims 8, 10 through 12, 22, 31 and 32 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the disclosure of Fine considered with Wollard. Claims 9 and 21 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the disclosure of Fine considered with Wollard and Montierth. Claims 13 through 15 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the claimed subject matter would have been obvious from the disclosure of Fine considered with Wollard and Boyd. OPINION The Examiner’s rejection of claim 21 is founded on the proposition that the subject of claim 21 is not described in Appellants’ specification in such a way as to convey to the skilled routineer in the art that at the time the application was filed Appellants described using the fatty acids recited in claim 9 in a concentration which exceeds a solubility limit within the continuous medium. Appellants direct our attention to paragraphs [0035] and [0036] of the specification as support for the subject matter claimed in claim 21. Specifically, Appellants urge that paragraph [0035] describes that “aliphatic acids” and “carboxylic acids” may be used as the solid material in the cleaning solution and that the solid material may be present at a concentration that exceeds its solubility limit within the continuous media. Appeal 2011-007055 Application 11/641,362 5 In paragraph [0036] the exact group of fatty acids set forth in claim 9 are set forth as being useful as the solid material. Appellants argue that the person of ordinary skill in the art, reading said paragraphs together would have recognized that because the fatty acids of claim 9 are described as useful solid materials and because the solid materials are described as being present in concentrations above the solubility limit the subject matter of claim 21 is described in such a fashion as to evidence that Appellants were possessed of the subject matter of claim 21 at the time Appellants filed their application. We agree with Appellants. We find Appellants’ as-filed specification describes in a manner that reasonably conveys to the skilled routineer that Appellants were possessed of the subject matter of claim 21 as of the filing date of the instant application. The Examiner’s argued position that the two paragraphs on which Appellants rely should not be read together is unreasonable and illogical. Paragraph [0035] describes materials useful as the solid material in Appellants’ solution and also discloses that the solid material should be present in a concentration that exceeds its solubility limit within the continuous media. The following paragraph, paragraph [0036], describes exemplary members of one of the useful groups of solid materials described in paragraph [0035] and the group therein described corresponds exactly to the group claimed in claim 9 on which claim 21 depends. The Examiner’s speculation that the disclosure of useful solid materials in paragraph [0036] is directed to a different embodiment than the discussion of useful solid materials and their concentration in paragraph [0035] finds no support in the record. Satisfaction of the “written description” requirement of the first paragraph of 35 U.S.C. § 112 does not require ipsimis verbis Appeal 2011-007055 Application 11/641,362 6 support of the claimed subject matter in Appellants’ specification. Rather, as the Examiner observes in his statement of his rejection at page 4 of his Answer, satisfaction of the “written description” requirement requires description of the invention claimed in such a way as to reasonably convey to one skilled in the relevant art that the inventors had possession of the claimed subject matter at the time Appellants filed their invention. This, Appellants have done. Accordingly, we reverse the examiner’s rejection of claim 21 under 35 U.S.C. §112, first paragraph. Each of the Examiner’s three rejections of the claims based on the prior art is founded on the same two references: Fine and Woollard. In addition to Fine and Woollard, the rejection of the subject matter of claims 9 and 21 also relies on Montierth and the rejection of the subject matter of claims 13 through 15 further relies on Boyd. For reasons which follow, we find the Examiner has failed to make out a prima facie case of obviousness with respect to the claimed subject matter. Fine is directed to “heterogeneous cleaning compositions.” The compositions therein disclosed may include “active cleaning ingredients”, “active conditioning ingredients”, “surfactant[s]”, “sequestrant[s]”, “active enzyme[s]”, “source[s] of alkalinity”, “antiredeposition agent[s]” and “optical brightener[s].” [0006]. The heterogeneous cleaning compositions can be in the form of a paste, powder, multi-phase liquid or gel. [0026] The therein disclosed compositions can be used for effective laundering by adding them to a washing machine. [0028]. Even after aging, the heterogeneous compositions at least partially leave an opened and inverted container under the force of gravity. [0029]. Fine includes an encyclopedic Appeal 2011-007055 Application 11/641,362 7 disclosure of additives useful for formulating their heterogeneous compositions. [0034] through [0177]. After packaging, the heterogeneous compositions can separate, precipitate, gel or solidify in the package. [0185]. The heterogeneous compositions may be used in a broad variety of institutional hospitality, foodservice and healthcare industries and include textile or laundry cleaning. [0198]. Testing of the disclosed compositions was conducted by laundering soiled fabric swatches. [0201] through [0216]. Woollard is directed to a method for dispensing a gel onto a surface. Specifically, Woollard is directed to coating release agents in the form of a gel to the surface of a vessel used in commercial baking. Woollard’s invention is said to be an improvement over conventional prior art methods using an atomizing nozzle under air pressure to spray a release agent on the surface of baking apparatus. Woollard achieves their improvement by delivering a gel through a distributor onto a rotating hub and the gel is thereafter dispensed from the rotating hub. In the first instance, the Examiner has failed to explain where Fine describes or suggests the limitation from claim 8 requiring a particular solution maintained in a stable elastic gel form and prepared from particular ingredients and having a finite yield stress. I ndeed, the Examiner recognizes this deficiency in Fine on page 6 of his Answer. Nothing in paragraph [0029] to which the Examiner has directed our attention describes or suggests a viscoelastic gel as required by Appellants’ claim 8. While Fine does utilize the word “gel” in its disclosure, how that gel is formed or what the properties of the gel might be is nowhere disclosed. There is no disclosure or discussion in Fine of the finite yield stress of the “gel” therein Appeal 2011-007055 Application 11/641,362 8 disclosed or that the “gel” would flow when “a minimum shear stress” above the finite yield stress is applied to the solution. The Examiner’s conclusion that these claim limitations are inherently met because “Fine discloses the same steps as those taught in the claims” is not supported by evidence of record. In particular, the Examiner has not identified evidence that merely “providing a solution in a container” would have been expected to yield the specific solution required by the claims and the Examiner has failed to set forth any reasonable explanation that supports his theory. Additionally, the Examiner has failed to explain why the routineer interested in cleaning the surface of wafers useful for preparing semiconductor devices would have been motivated to use the heterogeneous detergent compositions of Fine, useful for laundering fabric or textiles, to clean the surfaces semiconductor wafers. The Examiner’s reliance on Woollard in combination with Fine does not overcome the deficiencies noted above in the Examiner’s reliance on Fine. In the first instance, the nature of the “gel” used by Woollard is not set forth. The “gel” in Woollard is used as a lubricant for bakery apparatus to aid in the release of dough from various bakery equipment not as a cleaning solution as required by the appealed claims. Suffice it to say Woollard does not disclose or suggest using a viscoelastic gel for lubricating bakery equipment. The Examiner has failed to explain what would have motivated the skilled routineer to look to the art of lubricating bakery machinery for the purpose of devising a suitable composition for cleaning the surface of a substrate, such as employed in semiconductor devices, or why the routineer would have combined the disclosure of Woollard with the disclosure in Fine Appeal 2011-007055 Application 11/641,362 9 of useful laundry detergent compositions. Accordingly, we reverse the rejection of claims 8, 10 through 12, 22, 31 and 32 under 35 U.S.C. §103(a). Because all of the Examiner’s rejections based on the prior art rely on Fine considered with Woollard and because we have found that combination does not raise a prima facie case of obviousness with respect to the claims on which claims 9 and 21 depend and on which claims 13 through 15 also depend, we reverse the rejection of claims 9 and 21 and of claims 13 through 15 under 35 U.S.C. §103. The decision of the Examiner is reversed. REVERSED kmm