Ex Parte Sato

Patent Trial and Appeal Board

Dec 4, 2012

11049065 (P.T.A.B. Dec. 4, 2012)

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.
11/049,065 02/02/2005 Nobuyoshi Sato 03-0424 9405
79102 7590 12/05/2012
RYAN, MASON & LEWIS, LLP
90 FOREST AVENUE
LOCUST VALLEY, NY 11560
EXAMINER
SNOW, COLLEEN ERIN
ART UNIT PAPER NUMBER
2813
MAIL DATE DELIVERY MODE
12/05/2012 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 NOBUYOSHI SATO
____________

Appeal 2010-005460
Application 11/049,065
Technology Center 2800
____________

Before MARC S. HOFF, JEFFREY S. SMITH, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005460
Application 11/049,065

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. §134(a) from the Examiner’s final
rejection of claims 1-16, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. §6(b).
We affirm.

Representative Claim
1. A method for reducing integrated circuit peeling, the method
comprising:

providing a wafer having a top surface, a bottom surface, and an edge,
the top surface corresponding to at least one integrated circuit layer;

forming a solventphilic layer on the top surface of the wafer;

processing the wafer to add at least one integrated circuit layer;

forming a solvent retention boundary on the perimeter of the at least
one integrated circuit layer using a dry edge etching process; and

using a rotational wet edge etching process subsequent to the dry edge
etching process to apply a solvent that is philic to the solventphilic layer to
the bottom surface of the wafer;

wherein the solvent is retained outside the solvent retention boundary
on the top surface of the wafer during the rotational wet edge etching
process, and an unwanted film residue that is on the top surface of the wafer
and outside the solvent retention boundary is completely removed by the
solvent, while material that is inside the solvent retention boundary on the
top surface of the wafer and removable by the solvent, is not removed by the
solvent.

Appeal 2010-005460
Application 11/049,065

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Prior Art
Iyer US 5,937,312 Aug. 10, 1999
Gilbert US 2003/0036209 A1 Feb. 20, 2003
Aegerter US 6,632,292 B1 Oct. 14, 2003
STANLEY WOLF & RICHARD N. TAUBER, SILICON PROCESSING FOR THE
VLSI ERA VOL. 1: PROCESS TECHNOLOGY 202-03 (2d ed. 2000).

Examiner’s Rejections
Claims 1-3, 5-12 and 14-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilbert, Iyer, and Aegerter.
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilbert, Iyer, Aegerter, and Wolf.

ANALYSIS
Section 103 rejection of claims 1, 5-10, and 14-16
Appellant contends that the combination of Gilbert, Iyer, and Aegerter
does not teach an arrangement in which
the solvent is retained outside the solvent retention boundary on
the top surface of the wafer during the rotational wet edge
etching process, and an unwanted film residue that is on the top
surface of the wafer and outside the solvent retention boundary
is completely removed by the solvent, while material that is
inside the solvent retention boundary on the top surface of the
wafer and removable by the solvent, is not removed by the
solvent
as recited in claim 1. App. Br. 5. In particular, Appellant contends that this
functional limitation must be evaluated and considered. App. Br. 6.
Appellant also contends that the method claim does not have to produce a
novel or non-obvious product. Id.
Appeal 2010-005460
Application 11/049,065

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The Examiner finds that the combination of Gilbert, Iyer, and
Aegerter teaches this functional limitation. See Ans. 3-5, 8-9. In particular,
the Examiner finds that the boundary formed by the process taught by the
combination of Gilbert, Iyer, and Aegerter has the capability to retain
solvent outside the boundary during a rotational wet etching process to
remove unwanted film residue while not removing material inside the
boundary. Ans. 8-9; see also Advisory Action 2 (May 7, 2009). Thus,
contrary to Appellant’s contentions, the Examiner has evaluated and
considered this functional limitation, and concluded that this functional
limitation is taught by the combination of Gilbert, Iyer, and Aegerter.
Appellant further contends that the boundary taught by the
combination of Gilbert, Iyer, and Aegerter does not inherently have the
ability to retain solvent outside the boundary. According to Appellant,
although the ability of the boundary to retain solvent outside the boundary
may occur, this does not necessarily flow from the teachings of the prior art.
App. Br. 7; Reply Br. 3. The Examiner finds that the ability of the boundary
to retain solvent outside the boundary would have been obvious. Ans. 9.
Appellant’s inherency argument is irrelevant to the Examiner’s obviousness
rejection.
Appellant contends that the Examiner is varying all parameters,
including height of the boundary, speed of rotation, viscosity of solvent, and
temperature of the process to establish conditions to meet the limitations of
claim 1. Reply Br. 2-3. The Examiner finds that Figures 5 and 7 of Gilbert
teach a boundary. Ans. 3. The Examiner finds that the boundary taught by
the combination of Gilbert, Iyer, and Aegerter has the ability to retain
solvent outside the boundary. See Ans. 8-9 (citing Gilbert, Fig. 6; ¶ [0037]).
Appeal 2010-005460
Application 11/049,065

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Paragraph 37 of Gilbert teaches that contaminants are cleaned from
the backside, edge, and frontside exclusion zone surfaces of substrate 50
shown in Figure 6 by a wet etch process. (Figures 2A and 2B of Gilbert
show backside 33, edge 34, and frontside exclusion zone 35). Paragraph 37
further teaches that while the substrate 50 is rotated about axis 70, etching
solution 74 forms a film over the exposed backside, edge, and frontside
exclusion zone surfaces of the substrate. Therefore, we find that paragraph
37 suggests that the film does not form over the remaining surface of the
substrate, which is inside the boundary.
Contrary to Appellant’s contention, Gilbert suggests that the etching
solution is retained by the boundary shown in Figures 5-7, without varying
any parameters, during a rotational wet etching process to remove unwanted
film residue outside the boundary while not removing material inside the
boundary. Appellant has not provided persuasive evidence or argument to
rebut the Examiner’s findings that the boundary shown in Figures 5 and 7 of
Gilbert retains solvent during wet etching as suggested by Figure 6 and
paragraph 37 of Gilbert. We agree with the Examiner’s conclusion that the
combination of Gilbert, Iyer, and Aegerter teaches
the solvent is retained outside the solvent retention boundary on
the top surface of the wafer during the rotational wet edge
etching process, and an unwanted film residue that is on the top
surface of the wafer and outside the solvent retention boundary
is completely removed by the solvent, while material that is
inside the solvent retention boundary on the top surface of the
wafer and removable by the solvent, is not removed by the
solvent
as recited in claim 1.
Appellant contends that the Examiner bears the burden of proving that
it would have been obvious to one skilled in the art to implement a technique
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Application 11/049,065

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where the solvent is retained outside the boundary during wet etching to
remove material outside the boundary while not removing material inside
the boundary. App. Br. 8; Reply Br. 3. We find that the Examiner has met
this burden. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011).
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellant
has not provided arguments for separate patentability of claims 5-9, which
fall with claim 1. Appellant presents arguments for the patentability of
claim 10 similar to those presented for claim 1, which we find unpersuasive.
Appellant has not presented arguments for the separate patentability of
claims 14-16, which fall with claim 10.

Section 103 rejection of claims 2 and 11
Appellant contends that the references cited by the Examiner do not
teach that the range of revolutions per minute achieved in a rotational wet
edge etching process was recognized as a variable which achieves a
recognized result with regard to the ability of a solvent retention boundary to
prevent inward migration of the solvent within the perimeter of an integrated
circuit layer. App. Br. 9; Reply Br. 3-4.
Appellant’s contention is inconsistent with column 7, lines 23-34 of
Aegerter (cited at Ans. 4), which teaches that the flow rate of the processing
fluid, fluid pressure, and/or spin rate are used to control the extent to which
the processing fluid is selectively applied to the outer peripheral margin.
See also Abstract; col. 4, ll. 15-21; col. 7, ll. 56-64; col. 25, ll. 58-64; col. 27,
ll. 9-12. Appellant’s contention is also inconsistent with paragraph 37 of
Gilbert, which teaches that the thickness and uniformity of the etching
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solution that forms over the exposed surfaces of the substrate is determined
by the rate at which the substrate is rotated.
The rotational speed is a variable which achieves the recognized result
of affecting inward migration as taught by Gilbert and Aegerter. See In re
Antonie, 559 F.2d 618 (CCPA 1977). Given that Gilbert and Aegerter teach
that rotational speed affects inward migration, and Gilbert teaches that a
retention boundary prevents inward migration (as discussed in our analysis
of claim 1), we find that modifying the retention boundary of Gilbert to
prevent inward migration over a range of at least 200 rpm will not support
the patentability of the subject matter encompassed by the prior art unless
there is evidence indicating the claimed rotational speed is critical. See In re
Aller, 220 F.2d 454, 456 (CCPA 1955).
Here, Appellant alleges that paragraph 471 of Appellant’s
Specification, which discloses that a low boundary is substantially
dependent on rotational speed for preventing inward migration, but a high
boundary is less dependent, provides evidence of unexpected results. App.
Br. 9; Reply Br. 3. However, paragraph 47 discloses that the ability of the
boundary height to prevent inward migration is inversely proportional to the
rotational speed. The rotational speed and the boundary height produce the
expected result of preventing inward migration as taught by the combination
of Gilber, Iyer, and Aegerter. Appellant has not provided persuasive

1 In the event of further prosecution, the Examiner should consider whether
claims 2 and 11 satisfy the written description requirement of 35 U.S.C. §
112. We are unable to identify support in Appellant’s Specification for “the
solvent retention boundary prevents inward migration of the solvent . . . over
a range of at least 200 rpm for the rotational wet edge etching process.”
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evidence to show that a rotational speed in a range of at least 200 rpm is
critical to preventing inward migration.
We sustain the rejection of claim 2 under 35 U.S.C. § 103. Appellant
presents arguments for the patentability of claim 11 similar to those
presented for claim 2, which we find unpersuasive.

Section 103 rejection of claims 3 and 12
Claim 3 recites “wherein the solvent retention boundary has a height
of at least 0.9 micrometers.” Appellant contends that Figure 6 and
paragraph 35 of Appellant’s Specification show that the height of at least 0.9
micrometers achieves the unexpected result of impeding inward flow of the
solvent. App. Br. 10-11. However, Appellant’s Specification only gives an
example of the height of the boundary in “certain embodiments.” The
boundary height of 0.9 micrometers disclosed by Appellant achieves the
expected result of preventing inward migration as taught by Gilbert.
Further, Appellant has not provided persuasive evidence to show that the
height of 0.9 micrometers achieves a result that is critical.
We sustain the rejection of claim 3 under 35 U.S.C. § 103. Appellant
presents arguments for the patentability of claim 12 similar to those
presented for claim 3, which we find unpersuasive.

Section 103 rejection of claims 4 and 13
Appellant does not present arguments for separate patentability of
claims 4 and 13, but rather relies on those presented for claim 1 (App. Br.
17) which we find unpersuasive.
We sustain the rejection of claims 4 and 13 under 35 U.S.C. § 103.
Appeal 2010-005460
Application 11/049,065

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DECISION
The rejection of claims 1-3, 5-12 and 14-16 under 35 U.S.C. § 103(a)
as being unpatentable over Gilbert, Iyer, and Aegerter is affirmed.
The rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Gilbert, Iyer, Aegerter, and Wolf is affirmed.
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. §
41.50(f).

AFFIRMED

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