Ex Parte Shih et al

Board of Patent Appeals and Interferences

Nov 24, 2010

10863360 (B.P.A.I. Nov. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HONG SHIH, TUOCHUAN HUANG,
DUANE OUTKA, JACK KUO,
SHENJIAN LIU, BRUNO MOREL,
and ANTHONY CHEN
__________

Appeal 2009-004021
Application 10/863,360
Technology Center 1700
___________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004021
Application 10/863,360

2
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1-9, 11-16, and 25. Claims 10 and 17-24 are also
pending but have been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to a method for wet cleaning a
quartz surface. Claim 1, reproduced below, is illustrative.
1. A method for wet cleaning at least one quartz surface of a
component for a plasma processing chamber in which
semiconductor substrates are processed, the method
comprising:

a) contacting the at least one quartz surface of the
component with at least one organic solvent effective to
degrease and remove organic contaminants from the quartz
surface;

b) after a), contacting the quartz surface with a weak
basic solution which is effective to remove organic and metallic
contaminants from the quartz surface;

c) after b), contacting the quartz surface with a first
acid solution which is effective to remove metallic
contaminants from the quartz surface;

d) after c), contacting the quartz surface with a
second acid solution comprising hydrofluoric acid and nitric
acid to remove metallic contaminants from the quartz surface;
and

e) optionally repeating d) at least once.

App. Br., Claims Appendix.2

2 Appeal Brief dated April 25, 2008.
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The following Examiner’s rejections are before us on appeal:
(1) Claims 1, 3, 5-9, and 25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Shih3 and Herchen4;
(2) Claims 2 and 11-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shih, Herchen, and Craighead5; and
(3) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Shih, Herchen, and Verhaverbeke.6
DISCUSSION
1. Claim 1
The Examiner found that Shih discloses a method for wet cleaning a
surface of a component for a plasma processing chamber in which
semiconductor substrates are processed. The Examiner found that the
method comprises the steps of contacting the surface with an organic solvent
(420); contacting the surface with a weak basic solution (150); contacting
the surface with a first acid solution (170); and contacting the surface with a
second acid solution (190). Ans. 3.7
The Examiner found that there are two differences between the
method disclosed in Shih and the claimed method: (1) the first acid solution
(170), rather than the second acid solution (190), comprises hydrofluoric
acid and nitric acid and (2) Shih discloses that the surfaces being cleaned are
ceramic, rather than quartz. Ans. 3-4.

3 US 2003/0190870 A1, published October 9, 2003.
4 US 5,819,434, issued October 13, 1998.
5 US 6,559,474 B1, issued May 6, 2003.
6 US 6,491,763 B2, issued December 10, 2002.
7 Examiner’s Answer dated July 14, 2008.
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4
The Examiner found that Herchen teaches that “quartz is a particular
ceramic.” Ans. 4. Thus, the Examiner concluded that it would have been
obvious to one of ordinary skill in the art to use the method disclosed in Shih
to clean a quartz surface. Ans. 4. The Examiner also concluded that it
would have been obvious to one of ordinary skill in the art to use
hydrofluoric acid and nitric acid as the second acid solution in the method of
Shih. Ans. 4.
The Appellants argue that the combined teachings of Shih and
Herchen do not render the claimed method obvious for several reasons.
First, the Appellants argue that the portion of Herchen relied on by the
Examiner does not teach that quartz is a ceramic but rather discloses that
ceramics and quartz are alternatives, i.e., “ceramics or quartz.” App. Br. 5;
Herchen 5:1-10.
We find that the portion of Herchen relied on by the Examiner does
not disclose that “quartz is a particular ceramic.” However, the Examiner’s
error is harmless. There is no dispute on this record that silicon oxide is the
primary constituent of quartz. App. Br. 5 (“Silicon oxide is the primary or
sole constituent of quartz, as well-known by those of skill in the art.”). The
Examiner found that silicon oxide also occupies a predominant position in
ceramics. Ans. 10. This finding is consistent with Hawley’s Condensed
Chemical Dictionary 240 (Richard J. Lewis, Sr. ed., Van Nostrand Reinhold
Co. 1993),8 which defines “ceramic” as a product “in which silicon and its
oxide and complex compounds known as silicates occupy a predominant
position.” Thus, the Examiner had a reasonable basis for concluding that the

8 Copy attached.
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method disclosed in Shih would be useful for cleaning quartz surfaces
which, like ceramics, contains silicon oxide.
The Appellants argue that one of ordinary skill in the art would not
have considered using the process of Shih to clean a quartz surface because
Shih discloses that hydrofluoric acid removes silicon oxide. App. Br. 5.
This argument is not persuasive of reversible error. The method
disclosed in Shih is intended to clean ceramic surfaces, which as discussed
above, are known to contain silicon oxide. We recognize that Shih discloses
that “HF may be useful in removing silicon based materials (such as, for
example, silicon oxide, glass, and so forth).” Shih, para. [0016]; compare
Spec. [0027] (disclosing that hydrofluoric acid dissolves silicon and SiO2-
based materials). However, we understand these silicon based materials to
be contaminants on the ceramic substrate, rather than the ceramic substrate
itself. It would have been within the skill of the ordinary artisan to adjust
the cleaning conditions in Shih to minimize removal of silicon oxide in the
substrate being cleaned. See Shih, para. [0016]; compare Spec., para.
[0029].
In the Reply Brief, the Appellants argue that the acid cleaning
procedure of Shih would be highly corrosive of glass and quartz surfaces
because Shih “desires a strong solution of HF in order to remove Si.” Reply
Br. 3.9
However, contrary to the Appellants’ arguments, Shih does not
disclose that the solution of HF is “strong.” Shih merely discloses that the
ratio of HF:HNO3:H2O is (about 1):(about 1):(about 10) by weight and the

9 Reply Brief dated August 19, 2008.
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amounts of HF, HNO3, and H2O “may be determined routinely by one of
ordinary skill in the art without undue experimentation.” Shih, para. [0016].
Based on the foregoing, the preponderance of the evidence establishes
that it would have been obvious to one of ordinary skill in the art to use the
method disclosed in Shih to clean a quartz surface as recited in the claims on
appeal.
Next, the Appellants argue that no finding or evidence has been
provided by the Examiner establishing why one of ordinary skill in the art
would have selected hydrofluoric acid and nitric acid as the second cleaning
solution of Shih. App. Br. 6.
We disagree. The Examiner found that Shih discloses a first acid dip
(170) comprising hydrofluoric acid and nitric acid followed by a second acid
dip (190). The Examiner found that Shih discloses that chemical steps may
be replaced with other chemical steps. Ans. 10; Shih, para. [0025]. In the
absence of unexpected results, the Examiner concluded that it would have
been obvious to one of ordinary skill in the art to reverse the first and second
acid dips in Shih for the predictable result of cleaning the substrate. Ans. 10.
The Appellants have failed to direct us to any error in the Examiner’s
conclusion of obviousness or underlying factual findings.
The Appellants also contend that the Examiner has selected the
organic treatment step (420) from one embodiment in Shih and combined it
with steps from another embodiment disclosed in Shih. The Appellants
argue that it would not have been obvious to interchange steps among the
embodiments disclosed in Shih because the number of permutations is large.
App. Br. 6, 7.
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7
We recognize that Shih illustrates two embodiments of the disclosed
cleaning method in Shih Figures 1 and 2. The organic solvent treatment step
(420) referred to by the Examiner appears in the embodiment illustrated in
Shih Figure 2, and the weak basic solution treatment step (150), first acid
solution dip (170), and second acid solution dip (190) referred to by the
Examiner appear in the embodiment illustrated in Shih Figure 1. As
discussed above, the Examiner found that the chemical steps of Shih may be
replaced by or include other chemical steps. Ans. 10; see also Shih, paras.
[0025], [0031]. For example, Shih discloses that acid treatment steps may
be included in both embodiments to remove particular contaminants. Shih,
paras. [0025], [0031]. Thus, depending on the contaminants to be removed
and the surfaces to be cleaned, we conclude that it would have been within
the skill of the ordinary artisan to combine steps from either embodiment
disclosed in Shih for the predictable result of cleaning a substrate surface.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (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 this
regard, we note that the Appellants have not directed us to any evidence of
unexpected results.
For the reasons set forth above, the § 103(a) rejection of claim 1 will
be affirmed.
2. Claim 11
Claim 11 is also directed to a method for wet cleaning a quartz surface
of a component for a plasma processing chamber in which semiconductor
substrates are processed. The difference between claims 1 and 11 is that
claim 11 recites a specific organic solvent (i.e., isopropyl alcohol followed
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by acetone), a specific weak basic solution (i.e., ammonium hydroxide and
hydrogen peroxide), and a specific first acid solution (i.e., hydrochloric
acid). App. Br. Claims Appendix.
The Appellants argue that the Examiner does not address the
limitations of claim 11. App. Br. 9.
To the contrary, the Examiner addressed the obviousness of the
organic solvent, weak basic solution, and first acid solution recited in claim
11. See Ans. 8, 12 (discussing obviousness of claimed organic solvent);
Ans. 3 (finding that Shih discloses the recited weak basic solution (150));
Ans. 12-13 (discussing obviousness of claimed first acid solution).
The Appellants do not direct us to any error in the Examiner’s
conclusions of obviousness or underlying factual findings. Therefore, the
§ 103(a) rejection of claim 11 will be affirmed.
3. Claims 2, 4, and 12-16
As for claims 2, 4, and 12-16, the Appellants do not direct us to any
error in the Examiner’s factual findings and conclusions of law with regard
to Craighead and Verhaverbeke in the Appeal Brief. Rather, the Appellants
argue that Craighead and Verhaverbeke fail to cure the deficiencies of Shih
and Herchen. App. Br. 8, 10. For the reasons set forth above, there are no
deficiencies in Shih or Herchen that need to be cured by Craighead or
Verhaverbeke.
NEW ARGUMENTS
In the Reply Brief, for the first time on appeal, the Appellants argue
that claims 3, 5, 8, 12, and 16 are separately patentable. Reply Br. 9-11.
Appeal 2009-004021
Application 10/863,360

9
The Appeal Brief, not the Reply Brief, shall initially set forth the
contentions of the Appellants. In particular, 37 C.F.R. § 41.37(c)(1)(vii)
provides that the Appeal Brief shall contain:
The contentions of appellant with respect to each ground of
rejection presented for review in paragraph (c)(1)(vi) of this
section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on.

37 C.F.R. § 41.37(c)(1)(vii) (2010).
In certain cases, new arguments may be permitted in a Reply Brief.
For example, an Appellant may present new arguments in response to a new
ground of rejection. See 37 C.F.R. § 41.39(b)(2) (2010) (permitting a reply
brief in response to a new ground of rejection).
However, in this case, the new arguments presented in the Reply Brief
were not made in response to a new ground of rejection, nor were they
necessitated by additional fact findings or new contentions presented by the
Examiner in the Examiner’s Answer.10 The new arguments are merely
arguments that could have been made in the Appeal Brief, but were not.
Thus, they are untimely and will not be considered on appeal. See Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the reply brief that could have
been raised in the opening brief is waived); accord Ex parte Scholl, No.
2007-3653, slip op. at 18-19 n.13 (BPAI March 13, 2008) (designated as
“Informative Opinion”),

10 The Examiner’s statement of the rejections under §103(a) is substantially
the same in the Final Office Action and the Examiner’s Answer. See Final
Office Action dated January 31, 2008, at 9-11.
Appeal 2009-004021
Application 10/863,360

10
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (last visited
November 16, 2010).
DECISION
The Examiner’s decision 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).

AFFIRMED

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Hawley's Condensed Chemical Dictionary 240 (Richard J. Lewis, Sr., ed., Van Nostrand Reinhold Co. 1993)

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