Appeal No. 2005-0202 Page 5
Application No. 09/348,654
Examiner has ignored the express teachings of Appellant’s sworn specification that the order in
which conventional ashing and etching residue removing steps are performed is in fact critical.”
(Id.).
The problem with Appellant’s argument is that there is no foundation of evidence relied
upon to support the asserted criticality. Such evidence is required because the evidence relied
upon by the Examiner is sufficient to support a prima facie case of obviousness. See In re
Fortess, 369 F.2d 1009, 1017, 152 USPQ 13, 19-20 (CCPA 1966). This is because, according to
the Admitted Prior Art, processes including both an etching residue removing step (anti-after-
corrosion step; claim 1, step c), and an ashing step (claim 1, step d) were known in the prior art,
each step known to produce a particular effect. Moreover, the evidence shows that performance
of the steps in any of the three possible sequences, one before the other in either order or
concurrently, was known (Admitted Prior Art, specification, p. 4). The evidence indicates that
those of ordinary skill in the art would have understood that a workable result would occur with
each: the anti-after-corrosion step would remove etching residue and the ashing step would
remove photo-resist. That is enough to establish a prima facie case and shift the burden to
Appellant to demonstrate patentability through secondary considerations such as unexpected
results. Fortess, 369 F.2d at 1017, 152 USPQ at 19-20; In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). “[I]t is well settled that unexpected results must be
established by factual evidence.” In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365
(Fed. Cir. 1997). Appellant has not provided the level of factual evidence required.
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