Appeal No. 1996-2089
Application 07/978,626
Cuthbert et al. and Dyer et al. or Berretta et al. It is well settled that the examiner must satisfy his3
burden of establishing a prima facie case of obviousness by showing that some objective teaching or
suggestion in the applied prior art taken as a whole and/or knowledge generally available to one of
ordinary skill in the art would have led that person to the claimed invention, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See generally, In re
Rouffet, 149 F.3d 1350, 1355-56, 1357-58, 47 USPQ2d 1453, 1456, 1457-58 (Fed. Cir. 1998); In
re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In
re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). We agree
with appellants that the examiner has failed to carry his burden of making out a prima facie case of
obviousness with respect to the claimed invention.
The dispositive issue in this appeal is whether one of ordinary skill in this art would have
modified the apparatus of Sato et al. in order to provide the same with “an enclosure” which contains
the “etching roller and the means for supplying etching liquid” and has “an opening through which a
peripheral edge portion of the wafer extends into the enclosure for contact with the etching roller face,”
as specified in appealed claim 11. The examiner has provided two alternative approaches to this issue
in contending that one of ordinary skill in this art would have made the modification. First, the examiner
alleges that it would have been obvious to “provide an enclosure for the etching roller (21b) and the
etchant supplying nozzle (23) in Sato’s apparatus to separate these structure [sic, structures] from the
wafer and the atmosphere as a matter of design choice” (answer, page 4, emphasis supplied;
supplemental answer, page 2). And second, the examiner finds that one of ordinary skill in the art
would have enclosed the same components of Sato et al. to “prevent [harmful] vapors from reacting
with the center of the wafer” since “the object of Sato is to treat only the edge of the vapor [sic, wafer]”
and Cuthbert et al. teach “providing an enclosure around the periphery of the wafer being treated with a
solvent and providing air flow to direct unwanted material, which would include solvent vapor, away
3The references relied on by the examiner are listed at page 2 of the answer. We refer to these
references in our opinion by the name associated therewith by the examiner.
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