Appeal 2007-2364
Application 09/879,613
was not free from particles, metal ions, or anions, for the processing of
wafers in a clean room. In this regard, we also note the notorious sensitivity
of hydrogen peroxide to metal salts, illustrated by the passage from the
Dispensatory cited supra (FF 27). This provides further evidence, if any be
needed, that the use of deionized water as a diluent for hydrogen peroxide in
the context of a wipe or sponge intended for use in a clean room would have
been considered so ordinary that a disclosure directed to skilled workers
might well not mention it. Cf. Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986) (“a patent
need not teach, and preferably omits, what is well known in the art”) We
understand that it can be difficult to find evidence of ordinary practices,
because they are seldom described in technical literature: but it is error to
mischaracterize a reference. At the same time raising formal issues that lack
substantive merit neither advances prosecution nor enhances the credibility
of opposing arguments.
On the matter of the concentration of hydrogen peroxide recited in the
claims on appeal, we find that the Examiner has skipped over the Office's
burden to establish an evidentiary foundation for the prima facie case of
obviousness. In particular, the Examiner has not supported the finding that
hydrogen peroxide concentration over the range recited in the claims is a
known result-effective variable that would have been obvious to optimize.
Establishing such a foundation is particularly important when the applicant's
specification, as here, expressly distinguishes its range (0.05 to 1% hydrogen
peroxide by volume in the original claims and in the Specification at 5) from
the prior art, which Applicant describes as 1% to 5% hydrogen peroxide.
Moreover, Applicant asserts that the use of its hydrogen peroxide
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