Appeal No. 2005-1086 6
Application No. 09/032,305
wafer has been polished) before subjecting the resulting polished wafer to additional
oxidative cleaning steps as indicated supra. We find that Lampert also expressly teaches
employing an aqueous oxidative cleaning step after the end of a polishing step. Thus, the
examiner’s rejection cannot be overcome by the declaration which relies on the feature
implicitly described in Fabry or readily envisaged by one of ordinary skill in the art from the
written description of Lampert to show unexpected results. Compare In re Malagari, 499
F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974)(without novelty, a showing of
unexpected result is irrelevant). To hold otherwise is to impart patentability for recognizing
inherent results of old processes.
In the second place, the appellants have not demonstrated that the claimed
invention imparts unexpected results relative to the closest prior art. In re Klosak, 455
F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972)(“the burden of showing unexpected
results rests on he who asserts them”). The declaration does not contain any averment
that the allegedly improved result is unexpected. See In re Orfeo, 440 F.2d 439, 441, 169
USPQ 487, 489 (CCPA 1971). Nor does the declaration compare the claimed invention
with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991). We find that Fabry is the closest prior art since it, like the
claimed invention, removes residues from and at the same time, applies an oxidation layer
on a polished wafer immediately after polishing a wafer. We find that Lampert’s one of the
alternative embodiments, which is not exemplified, but can be readily envisaged by one of
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