Ex Parte Cohen

Board of Patent Appeals and Interferences

Apr 30, 2010

10688333 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte URI COHEN
______________

Appeal 2009-001403
Application 10/688,333
Technology Center 1700
_______________

Decided: April 30, 2010
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 1-10 and 29-43 in the
Office Action mailed September 5, 2009. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2007).
We affirm the decision of the Primary Examiner.
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Claim 1 illustrates Appellants’ invention of a method for electrofilling
a metal or alloy inside of at least one opening surrounded by a field on a
front surface of a substrate, and is representative of the claims on appeal:
1. A method for electrofilling a metal or alloy inside at least one
opening surrounded by a field on a front surface of a substrate, wherein at
least one surface inside the at least one opening comprises an exposed
metallic surface, said method comprising steps of:
(a) immersing the substrate in an activation or wetting solution;
(b) applying ultrasonic or megasonic vibrations to the substrate; and
after commencing step (b):
(c) applying high pressure jets of an electrolyte to the substrate, said
electrolyte comprises metallic ions of said metal or alloy: and
(d) applying an electroplating current to the substrate to electroplate
said metal or alloy inside the at least one opening;
wherein the activation or wetting solution is the same as the
electrolyte, and wherein steps (a), (b), (c), and (d) are performed in the same
chamber.
The Examiner relies upon the evidence in these references (Ans. 3): 1
Langner US 4,834,842 May 30, 1989
Tzanavaras US 5,421,987 Jun. 6, 1995
Reynolds US 5,904,827 May 18, 1999
Zhao US 6,071,809 Jun. 6, 2000
Downes, Jr. (Downes) US 2002/0189637 A1 Dec. 19, 2002
Appellants request review of the following grounds of rejection under
35 U.S.C. § 103(a) advanced on appeal by the Examiner (App. Br. 4):
claims 1, 3-5, and 29-32 over Tzanavaras in view of Downes with evidence
from Zhao (for claims 4, 5, 31, and 32) (Ans. 3);
claims 2, 7-9, 34-37, and 39-42 over Tzanavaras in view of Downes as
applied to claims 1 and 29, and further in view of Langner with evidence

1 We consider the Appeal Brief filed April 4, 2008, the Examiner’s Answer
mailed June 5, 2008, and the Reply Brief filed August 4, 2008.
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from Zhao (for claims 8, 9, 36, 37, 41, and 42) (Ans. 5);
claims 6 and 33 over Tzanavaras in view of Downes as applied to claims 1
and 29, and further in view of Reynolds (Ans. 7);
claims 10 and 38 over Tzanavaras in view of Downes and Langner as
applied to claims 2 and 34, and further in view of Reynolds (Ans. 7); and
claim 43 over Tzanavaras in view of Downes and Langner as applied to
claims 39-42, and further in view of Reynolds (Ans. 8).
Appellant argues the first ground of rejection based on the claims as a
group, and specifically argues claims 4, 5, 31, and 32 on the basis of
independent claims 1 and 29. App. Br., e.g., 7 and 9. Appellant argues the
second ground of rejection based on claims 2, 7-9, and 34-37, and on claim
39 with respect to claims 39-42. App. Br. 16-17. Appellant argues the third
and fourth grounds of rejection based on the claims as a group. App. Br. 19.
and 22. Thus, we decide this appeal based on claims 1, 2, 6, 10, 39, and 43
as representative of the grounds of rejection and Appellant’s groupings of
claims. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Opinion
We considered the totality of the record in light of Appellant’s
arguments and the evidence, including Appellant Cohen’s Declaration2
(Cohen Declaration) with respect to claims 1, 2, 6, 10, 39, and 43 and the
grounds of rejection advanced on Appeal. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary

2 Declaration under 37 C.F.R. § 1.132 by Appellant Cohen executed
December 19, 2006, and filed with the Amendment filed December 22,
2006. See App. Br. Evidence Appendix.
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indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
\(“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.”) (citing,
inter alia, In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellant’s arguments in the Briefs have not
established that the evidence in the totality of the record, including the
Cohen Declaration, weighs in favor of the nonobviousness of the claimed
method for electrofilling a metal or alloy inside of at least one opening
surrounded by a field on a front surface of a substrate encompassed by
claims 1, 6, 10, 39, and 43. In this respect, we are in substantial agreement
with the Examiner’s analysis of the evidence in the references and the Cohen
Declaration, and the legal conclusions stated in the Answer, to which we add
the following for emphasis with respect to Appellant’s arguments.
Claim 1: Tzanavaras and Downes
The dispositive issue in this appeal is whether the problem of
uniformly electroplating vias, holes, and other openings (“openings”) of
different aspect ratios in the surface of a substrate would have led one of
ordinary skill in the art to combine the teachings of Tzanavaras and Downes,
and thence to a method of degassing the interior of at least one opening of
the substrate immersed in an electroplating electrolyte by application of
ultrasonic vibrations, as taught by Downes, prior to applying high pressure
jets of the electrolyte to the substrate in the same electroplating chamber, as
taught by Tzanavaras, in the reasonable expectation of successfully
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electrofilling a metal or alloy to any extent in the interior of the opening as
required by the limitations of claim 1. In this respect, the combination of
Tzanavaras and Downes is basic to each of the grounds of rejection.
The Examiner finds that Downes recognized that the problem with
wetting the interior surfaces of openings in a substrate caused by air in the
openings can be avoided by degassing the openings using ultrasonic
vibrations. Ans. 4. The Examiner concludes that the combination of
Tzanavaras and Downes would thus have led one of ordinary skill in the art
to modify the method of Tzanavaras by applying ultrasonic vibrations to the
substrate in an electrolyte prior to commencing electroplating using high
pressure jets. Ans. 4. The Examiner further concludes that one of ordinary
skill in the art would have recognized that the ultrasonic vibrations “were
needed when the substrate was immersed in the electrolyte” and thus, would
“have applied the vibrations within the electroplating chamber.” Ans. 5.
Appellant submits the Examiner’s position is based on hindsight
because it ignores the teachings of Tzanavaras “that electrolyte jets alone
provide efficient agitation and, therefore, full wetting inside all openings,”
including openings with widths disclosed by Downes with respect to
applying ultrasonic vibrations. App. Br. 7. Thus, Appellant argues that one
of ordinary skill in the art “would understand that [Downes’] ultrasonic . . .
prewetting step, at best, could only provide functionality that was already
present in [Tzanavaras].” App. Br. 7-8, citing Tzanavaras col. 1, ll. 34-38,
and col. 3, ll. 13-34.

Appellant contends he discovered that contrary to Tzanavaras, “high
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pressure electrolyte jets alone [are] insufficient for full wetting inside deep
openings;” that contrary to Tzanavaras and Downes, “insufficient electrolyte
wetting is more prevalent inside wider openings than inside narrower
openings (a newly discovered wetting problem); and that ‘the source of the
newly discovered wetting problem . . . is due to smaller capillary forces
insider wider openings than inside narrower openings.” App. Br. 10.
Appellant argues the “discovers are unpredictable” in light of the teaching in
Tzanavaras that “electrolyte jets alone can accomplish full wetting inside all
openings (including the smallest, deepest, and highest aspect ratio
openings),” and the teachings in Downes and Tzanavaras that insufficient
wetting is more prevalent in higher aspect ratio openings than in lower
aspect ratio openings. App. Br. 10, citing Downes ¶¶ 0024 and 0042, and
Tzanavaras col. 3, ll. 17-22. Appellant submits that the discovery of the
source of the problem must be considered in determining patentability. App.
Br. 10.
Appellant submits that the evidence in the Declaration establishes the
surprising and unexpected discovery that high pressure electrolyte jets alone
will not fully wet deep openings, and that insufficient wetting increases with
increasing width of the deep openings. App. Br. 14 and 15, citing Cohen
Decl. pp. 3-6, Table I, and Figs. 2A-D; Tzanavaras col. 3, ll. 17-22; and
Downes ¶¶ 0024 and 0042; see also Reply Br. 4-6. Appellant points out that
the evidence in the Declaration shows that electrolyte jets alone will wet
close to 100% inside 6 µm wide vias but only 48% inside 55 µm wide vias.
App. Br. 14. Appellant further points out that the discovery of diminishing
capillary action with increasing opening widths is set forth in
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the Specification. App. Br. 14-15, citing Spec. ¶ 0013.
Appellant further submits that Tzanavaras and Downes both teach
away from the claimed method. According to Appellant, Tzanavaras teaches
away by disclosing that electrolyte jets alone provide sufficient agitation for
electrolyte penetration and wetting inside all opens. App. Br. 11-12, citing
Tzanavaras col. 3, ll. 13-34; see also Reply Br. 1-2. Appellant contends that
Downes “teaches away from having the activation or wetting solution be the
same as the electrolyte” in teaching “a different pre-wetting solution than the
plating solution, and to perform the pre-wetting step in a separate chamber
than the plating chamber.” App. Br. 8-9, 11, and 12-13, citing Downes ¶¶
0022, 0028, 0031, 0033, and 0040; see also Reply Br. 2-4.
We find Tzanavaras would have acknowledged to one of ordinary
skill in the art that it was known in the art that precision electroplating
requires a high degree of uniformity in filling openings of different aspect
ratios on a substrate, and non-uniformity electroplating often occurs in
openings of different aspect ratios “due to insufficient agitation and
replenishment of the minor constituent(s) inside deep and narrow opening
areas.” Tzanavaras col. 1, ll. 14-27. Tzanavaras illustrates the openings
which are 5-7 µm wide and 12-17 µm deep and are 50-75 µm wide and 4-5
µm deep, with the aspect ratios of openings across the substrate varying
from about 1:10 or less to about 3:1 or greater. Tzanavaras col. 1, ll. 34-45.
We find Tzanavaras would have disclosed to one of ordinary skill in
the art that a solution to the uniformity problem for openings of all aspect
ratios is the application of high pressure jets of electroplating electrolyte to
create turbulent flow at the substrate surface. Tzanavaras discloses that this
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provides “efficient agitation and replenishment” with “[h]igh aspect ratio
opening areas receive a similar degree of agitation (and replenishment) as
areas of lower aspect ratios,” which improves plating uniformity and
increased plating rate. Tzanavaras col. 2, l. 58 to col. 3, l. 24. Tzanavaras
discloses that “pulsating action allows for pressure relaxation and outflow of
depleted solution from the opening” when the jets are inactive, and the
injection of fresh solution into the openings when the jets are active, and the
turbulent flow and pulsating action prevents formation of stagnant and
depleted solution in the openings. Tzanavaras col. 3, ll. 24-34. Tzanavaras
discloses that improvements obtain “with aspect ratios ranging from 1:10 to
3:1 or greater.” Tzanavaras col. 9, ll. 58-63.
We find Downes would have acknowledged to one of ordinary skill in
the art that it was known in the art that substrates can have 2000 to 3000
openings, which can have a diameters within a range of about 0.001 to 0.002
inches, that is, about 25.4 to 50.8 µm, at high aspect ratios of 6-8:1, and that
can be difficult to “satisfactorily completely wet or plate the inside of the
holes due to the occluding presence of air or gas bubbles.” Downes ¶ 0003.
“[I]n the event that even if a single hole is not adequately copper-plated then
the entire apertured module comprising of the printed circuit board must be
discarded.” Downes ¶ 0003. “[I]t is of extreme importance to . . . provide
an adequate wetting of the holes or vias . . . prior to the effectuating of an
electroless copper plating pre-cleaning process step, in order to ensure that
all of the interior surfaces of the vias or holes are adequately prepared for the
electroless copper plating process.” Downes
¶ 0003. Downes discloses that prior art “pre-wetting or cleaning actions are
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primarily implemented in . . . liquids in a generally stagnant or static
environment, which frequently may be inadequate to fully remove entrapped
air or gas bubbles . . . particularly form internally of the small-diameter
high-aspect ratio holes or vias . . . of printed circuit board panels.” Downes
¶ 0019.
We find Downes would have disclosed to one of ordinary skill in the
art that the air bubble problem can be solved by the disclosed method of
degassing small high-aspect ratio openings in printed circuit boards “prior to
the wet chemical processing of the [printed circuit boards], such as the
copper plating of the surface area of the drilled” openings “in order to
remove any air or gas bubbles from the vias tending to inhibit the reliable
plating thereof.” Downes abstract and ¶ 0002. Downes also states that “the
numerous small high aspect ratio . . . holes or vias . . . are degassed through
the intermediary of a continuously flowing liquid, such as but not limited to
deionized and essentially degassed water.” Downes ¶ 0021; see also
¶¶ 0028 and 0031.
Downes discloses that the method can be carried out by a degassing
step using “ultrasonic prewetting in a deionized water or other suitable liquid
bath preceding cleaning” to remove air from the vias to allow “subsequent
process cleansing solutions to easily flow into the respective” openings.
Downes ¶ 0004; see also ¶¶ 0022 and 0025. “[T]he generated ultrasonic
energy field due to the action of ultrasonic transducers serves primarily to
promote acoustic microstreaming within the vias, thus shorting the path of
diffusion of the air in the liquid by virtue of circulation,” and the ultrasonic
field produced serves to maintain the degassed condition of the
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bath. Downes ¶ 0023.
Downes discloses in the embodiment illustrated in Downes Figure 1,
the “pre-wetting treatment of articles prior to a contemplated wet chemical
processing,” wherein the printed circuit boards have openings of small high
aspect ratio diameters, each preferably 0.001 to 0.002 inches, that is, about
25.4 to 50.8 µm, with high aspect ratios ranging between 6-8:1, “although
other sizes and diameters and aspect ratios are equally applicable to be
treated by the inventive degassing method.” Downes ¶ 0033. “Upon
completion of the prewetting process, which maybe [sic] a first step
preceding an electroless copper plating or precleaning process sequence, the
panels may be conveyed to a subsequent process tank.” Downes ¶ 0040.
We find Downes discloses
[0024] Although so-called panel bumping and panel tilting
have been employed in the technology in order to remove air
from drilled holes prior to and/or during the plating processes,
this maybe somewhat effective for larger-sized holes or vias,
but remains essentially ineffective for smaller holes or vias,
particularly those possessing high-aspect ratios.
In this respect, we find Downes acknowledges that “potentially for small
diameter . . . vias with small aspect ratios, agitation in a fully degassed tank
(without ultrasonic energy) may be sufficient to dissolve and eliminate all of
the air bubbles which are present in the bath or liquid.” Downes ¶ 0005.
This may be accomplished by mechanical vibration or agitation in a fully
degassed tank. Downes ¶ 0042.
Our consideration of the combined teachings of Tzanavaras and
Downes as a whole in light of the totality of the record and Appellant’s
arguments do not convince us that the Examiner erred in concluding that the
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claimed method encompassed by claim 1 would have been obviousness to
one of ordinary skill in the art. Indeed, we are of the opinion that the
problem of uniformly electroplating openings of different aspect ratios in the
surface of a substrate as disclosed by each of Tzanavaras and Downes would
have led this person to combine the teachings of references, and thence to a
method of degassing of at least one opening of the substrate immersed in an
electroplating electrolyte by application of ultrasonic vibrations, as taught by
Downes, prior to applying high pressure jets of the electrolyte to the
substrate in the same electroplating chamber, as taught by Tzanavaras, in the
reasonable expectation of successfully electrofilling a metal or alloy to any
extent in the at least one opening as required by the limitations of claim 1.
We are not persuaded of a different view of the record by Appellant’s
position. Appellant essentially advances two arguments. First, Appellant
argues that the teachings of each of Tzanavaras and Downes would not have
led one of ordinary skill in the art to combine the references because this
person would have recognized that the combination of methods would
provide a “belt and suspenders” solution to the problem of incomplete and
non-uniform plating of all of the interior surfaces of openings of the
substrate, regardless of dimension and aspect ratio, that was known in the
prior art as acknowledged by both Tzanavaras and Downes. See above
pp. 7 and 8-9. We disagree.
We are of the opinion that one of ordinary skill in the art would have
used a known method or a combination of known methods where the method
or methods would provide this person with the assurance that all openings of
the substrate, regardless of dimension and aspect ratio, would be plated in
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order to avoid producing a defective substrate, as acknowledged by Downes.
See above pp. 8-9. Indeed, both Tzanavaras and Downes disclose the
advantages of their respective methods over methods in which a solution is
applied in a stagnant environment or forms stagnant and depleted solution in
the interior of vias and holes. See above pp. 8 and 9.
In this respect, while Tzanavarases’ jets and Downes’ ultrasonic vibrations
both provide agitation leading to flow within the openings, we determine
that one of ordinary skill in the art would have recognized that the
application of ultrasonic vibration to the plating solution removes air and
bubbles from openings to provide more uniform wetting of the interior
surfaces of the openings as taught by Downes. See above pp. 7-8 and 9-10.
Thus, this person would have reasonably predicted from the references that
the application of ultrasonic vibration as taught by Downes prior to further
wet processing using Tzanavarases’ jets would successfully provide plating
solution flow into openings from which air and bubbles have been removed.
See, e.g., KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); In re Kahn,
441 F.3d 977, 985-88 (Fed. Cir. 2006); In re Sovish, 769 F.2d 738, 742-43
(Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the
art); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is . . . what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”); see also Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (“the expectation of
success need only be reasonable, not absolute”); In re O’Farrell, 853 F.2d
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894, 903-04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.”).
Furthermore, while Downes illustrates the use of ultrasonic vibration
in a pre-cleaning step conducted in a separate chamber, there is no dispute
that Downes would have disclosed to one of ordinary skill in the art that
ultrasonic vibration can be used to remove air and bubbles in different
applications where liquid is applied to the interior surfaces of vias and holes
in the same chamber.3 See, e.g., Reply Br. 3:1-3 (Downes “does not
specifically exclude an ultrasonic prewetting step in the same (electrolyte)
liquid and (ECD) chamber as in a subsequent plating step.”). See, e.g., In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“The fact that neither of the
references expressly discloses asymmetrical dialkyl moieties is not
controlling; the question under 35 USC 103 is not merely what the
references expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the claimed invention was made.”).
Thus, on this record, we cannot subscribe to Appellant’s arguments
that the Examiner erred in using hindsight in combining Tzanavaras and
Downes, or in failing to find that the teachings of Tzanavaras and Downes,
either separately or combined, when considered as a whole would have
taught away from the claimed method. See above pp. 5 and 7. Indeed, on
this record, as a matter of fact, the teachings of Tzanavaras and Downes

3 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826 (CCPA
1968), presuming skill on the part of this person. Sovish, 769 F.2d at 743.
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neither conflict nor otherwise would have discouraged one of ordinary skill
in the art from combining the same and thus from arriving at the claimed
method encompassed by claim 1. See, e.g., Depuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)) (“A reference does not teach
away, however, if it merely expresses a general preference for an alternate
invention but doe not ‘criticize, discredit, or otherwise discourage’
investigation into the claimed invention.”); Ormco Corp. v. Align Tech. Inc.,
463 F.3d 1299, 1308-09 (Fed. Cir. 2006); Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165, 1166-67 (Fed. Cir. 2006).
Second, Appellant argues that the claimed method is based on the
discovery that wider, lower aspect openings have a smaller capillary force
therein, thus rendering the high pressure electrolyte jets of Tzanavaras alone
insufficient for wetting such openings, as established by the evidence in the
Cohen Declaration, which discovery is unexpected and surprising in view of
the teachings of Tzanavaras to use jets alone and the teachings in Tzanavaras
and Downes that wetting is a problem in higher aspect ratio openings. See
above pp. 6-7. The Examiner does not dispute the data in the Cohen
Declaration which was obtained with high pressure electrolyte jets alone.
Ans. 10. See above pp. 6-7. We disagree with the conclusions that
Appellant would have us draw from the disclosures of Tzanavaras and
Downes and the evidence in the Cohen Declaration.
The difficulty we have with Appellant’s position is that the combined
teachings of Tzanavaras and Downes would have reasonably led one of
ordinary skill in the art to use Downes’ ultrasonic vibration step prior to the
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application of Tzanavarases’ electrolyte jets with respect to any substrate
having openings, as indeed, each of the references teach that the agitation
method disclosed therein is effective with all of the openings of the
substrate, regardless of dimension and aspect ratio. See above pp. 7-8 and 9-
10. We determine the combined teachings of the references corresponds to
the scope of claim 1 which does not specify any dimension or aspect ratio of
the at least one opening that must be electroplated, as the Examiner points
out, and further does not specify the extent to which the at least one opening
is electroplated. Ans. 10. Thus, on this record, the fact that Appellant has
discovered a further reason to combine the references to arrive at the claimed
method encompassed by claim 1 does not patentably distinguish claim 1
over the combined teachings of Tzanavaras and Downes. See, e.g., In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ((citing, inter alia, In re
Kronig, 539 F.2d 1300, 1304 (CCPA 1976)) (“As long as some motivation
or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the
reasons contemplated by the inventor.”); In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996) (citing In re Dillon,
919 F.2d 688, 693 (Fed. Cir. 1990) (en banc)).
Furthermore, we agree with the Examiner’s position that Downes
illustrates the effectiveness of ultrasonic vibration process for wetting the
interior surfaces of vias and holes that have openings in the 25.4 to 50.8 µm
range, and thus the evidence in the Cohen Declaration establishing that the
ultrasonic vibration process of Downes would be useful with vias and holes
with openings that fall within or are close to this range would have been
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expected by one of ordinary skill in the art. Ans. 10. Indeed, on this record,
Appellant’s elucidation that the mechanism of Tzanavarases’ process is
more effective at dimensions and aspect ratios below Downes’ range, and
thus the discovery of a new benefit of combining Downes’ process with
Tzanavarases’ process, does not render patentable the process suggested to
one of ordinary skill in the art by the combination of Tzanavaras and
Downes simply because those practicing the combined processes may not
have appreciated the mechanism or the results produced thereby from the
disclosures of the references. See, e.g., In re Woodruff, 919 F.2d 1575, 1577
(Fed. Cir. 1990); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548
(Fed. Cir. 1983) (“[I]t is . . . irrelevant that those using the invention may not
have appreciated the results[,] . . . [otherwise] it would be possible to obtain
a patent for an old and unchanged process.” (citations omitted)).
We note again here that Appellant’s arguments with respect to claims
4, 5, 31, and 32, under a separate heading, rely on the positions advanced
with respect to claim 1. App. Br. 9; see above p. 3. Indeed, Appellant
contends that “Zhao’s disclosure . . . has no effect on the argument set froth
above (and below) regarding [Tzanavaras] in view of [Downes].” App. Br.
9. Thus, our consideration of Appellant’s previous position also applies to
these claims.
Claims 2 and 39: Tzanavaras, Downes, and Langner
Appellant submits in argument with respect to each of claims 2 and 39
that Langner does not affect arguments previously advanced with respect to
Tzanavaras and Downes, and arguments with respect to Zhao. App. Br. 16-
18. We agree with Appellant that claim 39 is similar to claim 1 and indeed,
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claims 1 and 39 both encompass methods wherein the inside surfaces of the
at least one opening are wetted by the application of ultrasonic vibration
which is addressed by the Examiner’s grounds of rejection of these claims
and responded to by Appellant. See App. Br. 17 and 23. Thus, our
consideration of Appellant’s previous position with respect to Tzanavaras
and Downes applies to claims 2 and 39 as well.
Claim 6: Tzanavaras, Downes, and Reynolds
Claims 10 and 43: Tzanavaras, Downes, Langner, and Reynolds
Appellant addresses these grounds of rejection based on Reynolds,
arguing that Reynolds does not affect previous arguments with respect to
Tzanavaras and Downes. Appellant further does not support the arguments
that Reynolds does not apply to claims 6, 10, and 43 for the reasons set forth
by the Examiner. Thus, our consideration of Appellant’s previous position
with respect to Tzanavaras and Downes also applies to these claims.
Conclusion
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Tzanavaras and Downes alone and as further
combined with Zhao, Langner, and Reynolds with Appellant’s
countervailing evidence of and argument for nonobviousness, including the
Cohen Declaration, and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 1-10 and 29-43 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
The Primary 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)(1)(iv).
AFFIRMED

cam

URI COHEN
4147 DRAKE AVENUE
PALO ALTO, CA 94306