Appeal No. 1996-2089
Application 07/978,626
from the center of the wafer” (answer, page 5; see also id., page 7, and supplemental answer, page 2).
Appellants submit that the examiner has not established on the record either that Cuthbert et al. would
have suggested such an enclosure to one of ordinary skill in this art or that this person would have made
the modification as “a matter of design choice,” pointing out that the specific structure required by the
element of claim 11 set forth above is not taught or suggested in the evidence of record (principal brief,
pages 7-9 and 11-12; reply brief, pages 3-5).
We, like appellants, do not find the examiner’s reasoning supported by the evidence of record.
The only evidence of an enclosed apparatus for treating the edge of a wafer supplied by the examiner is
Cuthbert et al. We find that this reference advances a solution to problems encountered in treating the
edge of a wafer with a “jet of solvent . . . while the wafer is spinning” inside of a “spin-on coating
apparatus” which is an enclosed apparatus and thus, forming an enclosure is not part of the solution
taught in the reference (e.g., abstract, col. 2, lines 34-41, with reference to Cuthbert et al. FIGs. 5-7,
col. 2, lines 55-57, and particularly, col. 5, lines 2-48). Furthermore, we find that both Sato et al.
and Berretta et al. treat the edge of the wafer differently from Cuthbert et al. in that these references
apply the etching solution in an unenclosed apparatus via a roller to the edge of a wafer which is not
spinning, and Sato et al. further teach means to contain the etching solution during this type of
application (cols. 2-4). Thus, we find no teachings or suggestion to combine these references
with the reasonable expectation of arriving at the claimed invention, including the element of claim 11 set
forth above, and indeed, even if one of ordinary skill in the art combined the teachings of Sato et al.,
Cuthbert et al. and Berretta et al., the most likely result would be the modification of the apparatus of
Cuthbert et al. by replacing the “jet of solvent” system with a roller applicator system as suggested by
Sato et al. and by Berretta et al., which is not the claimed invention. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988). Furthermore, in order
for the examiner to establish that one of ordinary skill in this art would have modified Sato et al. by
choosing a design based on knowledge in the art, the examiner must advance on the record evidence of
that knowledge along with an explanation of why that person would have combined such knowledge
with the teachings of Sato et al. in order to make the choice necessary to arrive at the claimed invention.
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