Ex Parte Haibara

Patent Trial and Appeal Board

Mar 28, 2018

12592706 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/592,706 12/01/2009
22045 7590 03/30/2018
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
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.
WSAG0249PUS 5730
EXAMINER
COLEMAN, RY AN L
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte TERVO HAIBARA 1
Appeal2017-003529
Application 12/592,706
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
DONNA M. PRAISS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 30-38, 40, and 42--46. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 30 is illustrative of Appellant's subject matter on appeal and is
set forth below:
1 Appellant identifies the real party in interest as Siltronic AG. See Appeal
Br. 3.
Appeal2017-003529
Application 12/592,706
30. A cleaning method of removing wax which is adhered
to a semiconductor wafer surface, by using a cleaning liquid, the
cleaning method comprising:
introducing a gas to the cleaning liquid by using a
micro bubble generating device in order to generate microbubbles
in the cleaning liquid, and immersing a semiconductor wafer in
the cleaning liquid which contains the microbubbles generated
by the gas to clean a surface of the semiconductor wafer, wherein
wax adhering to the surface of the semiconductor wafer is
uniformly removed while dissolving the wax in the cleaning
liquid without exfoliating the wax as a solid material.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Amemiya
Chou
Hasegawa
US 2001/0025017 Al
US 2004/0187891 Al
US 2006/0137719 Al
THE REJECTIONS
Sept. 27, 2001
Sept. 30, 2004
June 29, 2006
1. Claims 30-38, 40, 42, and 44--46 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Amemiya in view of
Hasegawa.
2. Claim 43 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Amemiya in view of Hasegawa and further in view of
Chou.
3. Claim 46 is rejected under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C.
§ 112, fourth paragraph, as being of improper dependent form.
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellant's position in the record regarding Rejections 1 and 2.
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Appeal2017-003529
Application 12/592,706
Accordingly, we reverse Rejections 1 and 2 for the reasons discussed below,
with a focus on the dispositive argument in this case. With regard to
Rejection 3, we affirm, for the reasons provided in the record and discussed
below.
As an initial matter, as mentioned by both parties in the record, there
was a previous appeal in this case (Appeal No. 2013-002509). In this
previous appeal, independent claim 1 2 was one of the claims under
consideration, and the Examiner relied upon the same prior art. In this case
before us, independent claim 30 is the independent claim under
consideration, and a new issue is raised in the record that was not raised by
Appellant in the previous Appeal No. 2013-002509. This issue is whether
Amemiya teaches away from the proposed combination in support of
unobviousness based upon Amemiya's teaching to avoid bubbling. This
issue is addressed below.
Rejection 1
Appellant argues, inter alia, that Amemiya teaches to avoid bubbling.
Appeal Br. 5 and 6; Reply Br. 4; Amemiya i-f 33. As such, Appellant argues
that motivation is lacking in making the proposed modification of
incorporating micro bubbling (from the teachings of Hasegawa) into the
process of Amemiya.
2 This independent claim 1 recited:
1. A method for removing wax from a semiconductor wafer surface,
comprising contacting a surface of the semiconductor wafer which
has wax thereon with a cleaning liquid containing microbubbles, the
microbubbles supplied to the cleaning liquid by a microbubble
generating device which introduces gas into the cleaning liquid.
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Appeal2017-003529
Application 12/592,706
The Examiner responds by stating that this undesired bubbling
discussed in Amemiya concerns the amount of cleaning agent in the cleaning
solution. Ans. 11. The Examiner states that this teaching does not indicate
the proposed combination "is somehow doomed to fail". Ans. 11. The
Examiner makes the argument that the bubbling technique of Hasegawa is
carefully controlled and that it should not be conflated with the bubbling
mentioned in Amemiya. Ans. 11.
In reply, Appellant presents reasons (Reply Br. 4---6) essentially for
making the point that the Examiner's view that the bubbling avoided in
Amemiya is not to be conflated with the bubbling in Hasegawa is
insufficiently supported.
We note that whether a reference teaches away from a claimed
invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). In the instant case, Appellant's point that Amemiya teaches to avoid
bubbling is well taken because this teaching amounts more to
discrediting/inoperability over mere disfavored properties or minor
drawbacks. Amemiya in fact teaches that amounts of the cleaning agent are
chosen so as to avoid bubbling. Amemiya i-f 33. "If the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification." In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). We likewise accept the point made by Appellant
that the Examiner's view that the bubbling avoided in Amemiya is not to be
conflated with the bubbling in Hasegawa is insufficiently supported in the
record for essentially the reasons discussed in the record by Appellant.
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Appeal2017-003529
Application 12/592,706
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 because the Examiner does not rely upon Chou to cure the stated
deficiencies in the combination of Amemiya in view of Hasegawa.
Rejection 3
Appellant does not address Rejection 3 in the Appeal Brief or in the
Reply Brief. We thus summarily affirm this rejection.
DECISION
Rejections 1 and 2 are reversed.
Rejection 3 is affirmed.
TIME PERIOD
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-IN-PART
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