Ex Parte Basin et alDownload PDFPatent Trial and Appeal BoardMar 14, 201714131686 (P.T.A.B. Mar. 14, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/131,686 01/09/2014 Grigoriy Basin 2011P00588WOUS 1931 136186 7590 03/16/2017 T limileHs; T T .P (Patent T aw firming EXAMINER 370 West Trimble Road San Jose, CA 95131 PETERSON, ERIK T ART UNIT PAPER NUMBER 2822 NOTIFICATION DATE DELIVERY MODE 03/16/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): nancy.glynn@philips.com us-ip@patentlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GRIGORIY BASIN, JOHN EDWARD EPLER, and PAUL SCOTT MARTIN1 Appeal 2016-003576 Application 14/131,686 Technology Center 2800 Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and LILAN REN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—18. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim a method comprising positioning a flexible film over a wafer of semiconductor light emitting devices and bonding a substrate to the wafer via the flexible film (sole independent claim 1). 1 Lumileds LLC is identified as the real party in interest. App. Br. 2. Appeal 2016-003576 Application 14/131,686 A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A method comprising: positioning a flexible film over a wafer of semiconductor light emitting devices, each semiconductor light emitting device comprising a semiconductor structure comprising a light emitting layer sandwiched between an n-type region and a p-type region, wherein the flexible film is formed separate from the wafer, then positioned over the wafer; bonding a substrate to the wafer of semiconductor light emitting devices via the flexible film, wherein after bonding the flexible film is in direct contact with the semiconductor structure; and after bonding the wafer to the substrate, dividing the wafer. The Examiner rejects independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Melman (US 2010/0295077 Al, pub. Nov. 25, 2010) (Final Action 2) or Shimokawa (US 2010/0140640 Al, pub. Jun. 10, 2010) (id. at 3 4) and rejects dependent claims 2—18 under 35 U.S.C. § 102(b) or under 35 U.S.C. § 103(a) based on these respective references (id. at 2—10). Appellants do not present separate arguments specifically directed to the dependent claims under rejection (App. Br. 3—5). Therefore, the dependent claims will stand or fall with their parent independent claim 1. 2 Appeal 2016-003576 Application 14/131,686 We sustain the Examiner’s rejections for the reasons given in the Final Action and the Answer with the following comments added for emphasis. The Examiner finds that the silicone adhesive film of Melman (see element 124 of Fig. 5c and | 60) or Shimokawa (see element 20 of Fig. 17 and 1 86) is inherently flexible as required by claim 1 (Final Action 2—3, 10, 12). Appellants argue that “silicone may be used in forms that are not flexible films” (App. Br. 5) and that “[flexible as recited in claim 1 is not an inherent property of silicone” (id.). In responding to this argument, the Examiner logically reasons that the silicone adhesive film of Melman or Shimokawa must possess some degree of flexibility in order to perform its bonding function and in order to permit the wafer to be diced or divided subsequent to the bonding step (Ans. 10-12). In an apparent attempt to rebut the Examiner’s reasoning, Appellants contend that adhesives such as 124 shown in Melman’s Figure 5c “are often extremely viscous liquids . . . [which] can be applied to a surface and inverted . . . such as in Fig. 5c” (Reply Br. 3) but that “[s]uch liquids cannot, however, be ‘formed separate from the wafer, then positioned over the wafer’ as recited in claim 1” (id.). 3 Appeal 2016-003576 Application 14/131,686 Appellants’ contention is unpersuasive because it is not supported by evidence and more importantly because it is contradicted by Figure 5c of Melman. In this latter regard, Figure 5c displays silicone adhesive 124 as a film formed separate from and positioned over wafer 148 as claimed. For the reasons given by the Examiner and emphasized above, Appellants fail to show error in the Examiner’s finding that the silicone adhesive film of Melman or Shimokawa necessarily and inherently possesses the flexible characteristic required by claim 1. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical,. . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product.”). The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 4 Copy with citationCopy as parenthetical citation