Ex Parte Haibara et al

Patent Trials and Appeals Board

Jun 20, 2019

13618784 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/618,784 09/14/2012
95683 7590 06/24/2019
Ley dig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Teruo Haibara
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.
812839 5522
EXAMINER
RIVERA-CORDERO, ARLYN I
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERVO HAIBARA, ETSUKO KUBO,
YOSHIHIRO MORI, and MASASHI UCHIBE
Appeal2018-007991
Application 13/618,784
Technology Center 1700
Before JEFFREY T. SMITH, LILAN REN, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-007991
Application 13/618,784
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from rejections2 of claims
1, 3-11, 13-16, and 18-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method to clean a substrate by irradiating
ultrasonic waves to a solution in which gas (usually nitrogen) has been
dissolved. Spec. ,r,r 2, 4. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An ultrasonic cleaning method for cleaning an object in a
solution having a gas dissolved therein, the method comprising:
irradiating ultrasonic waves to the solution having a first
dissolved gas concentration, wherein the irradiating is started at
a point of time when the dissolved gas concentration reaches
the first dissolved gas concentration; and
lowering, while the ultrasonic waves are being irradiated
to the solution, a dissolved gas concentration in the solution
from the first dissolved gas concentration to a second dissolved
gas concentration that is lower than the first dissolved gas
concentration, such that sonoluminescence occurs,
wherein the sonoluminescence continues throughout the
lowering step,
wherein the second dissolved gas concentration is one at
which the sonoluminescence would not occur if the irradiating
would have started at the second dissolved gas concentration,
and wherein the second dissolved gas concentration is
not less than 4 ppm and not more than 10 ppm.
1 The real party in interest is identified as "Siltronic AG." Appeal Brief of
March 1, 2018 ("App. Br."), 1.
2 Final Office Action of November 15, 2017 ("Final Act."). In this Decision,
we also refer to the Examiner's Answer of June 8, 2018 ("Ans.") and the
Reply Brief of August 3, 2018 ("Reply Br.").
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Application 13/618,784
App. Br. 10 (Claims Appendix).
REJECTIONS
The Examiner rejects claims 23 and 24 "under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre- AIA), first paragraph" as non-enabling as well as "35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre- AIA), second paragraph" as
indefinite. Final Act. 4, 7.
The Examiner also rejects claims 23 and 24 "under 35 U.S.C. §
112(d) or 35 U.S.C. § 112 (pre- AIA), fourth paragraph." Final Act. 8.
The Examiner rejects claims 1, 3-5, 13, 14, 18, 19, and 22 under pre-
AIA 35 U.S.C. § I03(a) as being unpatentable over EP 1 834 708 A2,
published September 19, 2007 to Watanabe et al. (hereinafter "Watanabe").
Final Act. 10.
The Examiner rejects claims 6-9 under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Watanabe in view of US 2010/0294305 Al,
published November 25, 2010 to Abe et al. (hereinafter "Abe"). Final Act.
14.
The Examiner rejects claims 10, 11, and 21 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Watanabe in view of US 3,893,869,
issued July 8, 1975 to Mayer et al. (hereinafter "Mayer"). Final Act. 16.
The Examiner rejects claims 15, 16, 20, 23, and 24 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Watanabe in view of JP
2011-183300, published September 22, 2011 to Hitachi (hereinafter
"Hitachi"). Final Act. 18, 19.
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Application 13/618,784
OPINION
Rejections of Claims 23 and 24 Under Section 112
Appellants expressly decline to appeal the Examiner's rejections of
claims 23 and 24 under various paragraphs of 35 U.S.C. § 112. App. Br. 3.
We, therefore, summarily sustain the Examiner's rejection of claims 23 and
24 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre- AIA), first paragraph,
the rejection under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre- AIA), and
the rejection under 35 U.S.C. § 112(d) or 35 U.S.C. § 112 (pre- AIA), fourth
paragraph. Cf Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("In the
event of ... a waiver, the [Board] may affirm the rejection of the group of
claims that the examiner rejected on that ground without considering the
merits of those rejections.").
Rejection of Claim 1 Over Watanabe 3
Appellants argue that the Examiner reversibly erred in rejecting claim
1 because the prior art method does not teach or suggest "lowering, while
the ultrasonic waves are being irradiated to the solution, a dissolved gas
concentration in the solution from the first dissolved gas concentration to a
second dissolved gas concentration ... wherein the second dissolved gas
concentration is not less than 4 ppm and not more than 10 ppm." App. Br. 3,
5. Appellants acknowledge that Experiment 1 of Watanabe describes an
ultrasonic cleaning method using a solution having a dissolved nitrogen gas
concentration at 8 ppm, 10 ppm, 12 ppm, 14 ppm, and 16 ppm. Id. at 5.
Appellants, however, argue that Experiment 1 does not teach the step of
3 Appellants do not present separate arguments claims 3-5, 13, 14, 18, 19,
and 22 and they stand or fall with claim 1. App. Br. 3-8; see also 37 C.F.R.
§ 4I.37(c)(1)(iv)(2013).
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Application 13/618,784
lowering the dissolved gas concentration because the gas concentrations in
Experiment 1 are held constant throughout the cleaning process. Id.
Appellants acknowledge that Experiment 2 (as illustrated in Fig. 3) of
Watanabe shows a decrease of gas concentration but argue that the decrease
from 14 ppm to 12 ppm is outside the recited range of between 4 ppm and
10 ppm. Id.
The Examiner points out that Watanabe broadly provides the
dissolved gas concentrations may be lowered without limiting the lowered
concentration to that used in Experiment 2. Final Act. 10-11 ( citing
Watanabe ,r,r 11, 65, 92-102); Ans. 4 (citing the same). The Examiner
reasons that because Watanabe describes a dissolved gas concentration at 10
ppm being effective for cleaning, a skilled artisan would have decreased the
dissolved gas concentration to arrive at the recited range. Ans. 4; see also
Final Act. 11.
Watanabe describes lowering the dissolved gas concentration for a
purportedly favorable cleaning result. Watanabe ,r 11. The record before us
does not show that Watanabe limits the lowered gas concentration to any
particular value. As an example showing the favorable cleaning result by
lowering the gas concentration, Watanabe compares Experiment 1 (holding
the dissolved gas concentration constant) with Experiment 2 (decreasing the
dissolved gas concentration) and provides that "the particle removing ratio
was significantly enhanced" in Experiment 2. Id. ,r 105. The record
supports the Examiner's determination that a skilled artisan would have
arrived at the recited gas concentration in the "lowering" step based on the
prior art teachings and the skills and knowledge of the artisan. See Ans. 4--
5; Final Act. 11; see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)
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Application 13/618,784
("The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.").
Appellants argue that a skilled artisan would not have used the
concentration at 10 ppm in Watanabe Experiment 1 because it "yields poor
results compared to the second experiment." App. Br. 6; see also Reply Br.
3--4 (citing Watanabe, Table 1). We are not persuaded by this argument.
Experiment 1 of Watanabe uses a variety of constant dissolved gas
concentrations including 10 ppm and 12 ppm. Watanabe ,r 99 (Table 1).
Experiment 2 of Watanabe decreases a dissolved gas concentration from an
initial higher amount to 12 ppm. Id. ,r 104 (Table 2). The purported
favorable cleaning result is based on the "different dissolved gas
concentrations" in Experiment 2. Id. ,r 105. The record, therefore, does not
support Appellants' argument that a skilled artisan would not have decreased
the dissolved gas concentration to those used in Experiment 1. Where, as
here, "the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellants also argue that the Examiner reversibly erred by stating
that the recited range is not critical. Reply Br. 7. Appellants argue that the
recited range is critical because it is "'one which the sonoluminescence
would not occur if the irradiating would have started at the second dissolved
gas concentration."' Id. ( citing Spec. ,r,r 26-33). To show criticality of a
claimed range, "'it is not inventive to discover the optimum or workable
ranges by routine experimentation.' Only if the 'results of optimizing a
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Application 13/618,784
variable' are 'unexpectedly good' can a patent be obtained for the claimed
critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.
In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990) (citations omitted).
In this case, the portions of the Specification cited by Appellants,
namely paragraphs 26 to 33 (Reply Br. 7) do not mention the specific
dissolved gas concentration at all. For example, paragraph 26 of the
Specification states, in its entirety: "In an embodiment, the present
invention addresses the above-described problems, and provides an
ultrasonic cleaning method that allows a high particle removal efficiency to
be achieved with stability." The record before us does not support
Appellants' criticality argument. See Woodruff, 919 F. 2d at 1578 (holding
that an applicant must support the criticality "generally by showing that the
claimed range achieves unexpected results relative to the prior art range").
Appellants next argue that the Examiner reversibly erred by finding
that Watanabe teaches or suggests that "the sonoluminescence continues
throughout the lowering step" as recited in claim 1. App. Br. 7. The
Examiner acknowledges that Watanabe is silent with regard to
sonoluminescence but finds that the substantially similar prior art process
would reasonably be expected to exhibit substantially similar characteristics.
Final Act 11. Appellants argue that because Watanabe does not specifically
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Application 13/618,784
disclose the recited dissolved gas concentration range, "no conclusion can
properly be drawn" from Watanabe. App. Br. 7.
"It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable."
Woodruff, 919 F .2d at 1578. Discovery of a property inherent to a prior art
process does not render that process patentable, even if the prior art did not
appreciate the property. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 633 (Fed. Cir. 1987). Where, as here, the Examiner establishes a
reasonable belief that the prior art process teaches all the recited steps and
would, therefore, exhibit the same property or characteristic in the form of
sonoluminescence, the burden of proof shifts to Appellants to show that this
characteristic or property is not possessed by the prior art. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977). Appellants have not presented evidence
showing that the Watanabe process would not exhibit the recited
characteristic and we are not persuaded that reversible error has been
identified.
Remaining Claims
With regard to the remaining claims, namely, claims 6-11, 15, 16, 20,
21, 23, and 24, Appellants do not present arguments separate from those for
claim 1. App. Br. 8 (stating that the additionally cited references do not
teach or suggest the limitations of claim 1 ). We sustain the rejections of
these claims based on the analysis supra.
DECISION
The Examiner's decision is affirmed.
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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)(l )(iv).
AFFIRMED
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