Appeal 2006-1078
Application 09/425,694
inventor and with no knowledge of the claimed invention, [ ] have selected the various
elements from the prior art and combined them in the manner claimed." See Princeton
Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337, 75 USPQ2d 1051,
1054 (Fed. Cir. 2005). To establish a prima facie case of obviousness, the examiner
must identify some objective teaching in the prior art or show that knowledge generally
available to one of ordinary skill in the art would lead that individual to combine the
relevant teachings of the references. The examiner may not resort to speculation,
unfounded assumption or hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Appellants argue that the examiner’s rejection is improperly based on hindsight
reasoning. We agree. In particular, we find that the examiner’ has failed to identify any
incentive in the prior art to substitute Pirooz’s DI rinse with Verhaverbeke’s aqueous
solution of HCl.
Appellants maintain that one of ordinary skill in the art would not have been
motivated to substitute Pirooz’s deionized water rinse with an aqueous HCI rinse given
Pirooz’s explicit statement that “if the ozonated bath contains hydrochloric or nitric acid,
. . . the treated wafers should be rinsed . . . in deionized water.” (Appeal Brief, p. 6).
In response, the examiner argue:
the hydrochloric acid in the DI rinse, taught by Verhaverbeke, is explicitly
taught to contain HCI in a minute concentration and Verhaverbeke
specifically teaches the primary goal of the rinsing fluid is to remove
chemicals or reaction products from the surface of electronic components,
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