Ex Parte Carre et al

Patent Trial and Appeal Board

Nov 28, 2016

12548685 (P.T.A.B. Nov. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/548,685 08/27/2009
22928 7590 11/30/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Alain Robert Emile Carre
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SP09-240 7568
EXAMINER
WU,VICKIH
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
11/30/2016 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAIN ROBERT EMILE CARRE,
SEAN MATTHEW GARNER, and
JEAN WAKU-NSIMBA
Appeal 2014-008334
Application 12/548,685
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and JAMES C.
HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1 and 3-26 as unpatentable
1 Our decision refers to the Specification (Spec.) filed August 27, 2009,
Appellants' Appeal Brief (Appeal Br.) filed January 20, 2014, the
Examiner's Answer (Ans.) delivered June 6, 2014, and Appellants' Reply
Brief (Reply Br.) filed July 23, 2014.
2 According to Appellants, the real party in interest is Coming Incorporated.
Appeal Br. 2.
Appeal2014-008334
Application 12/548,685
under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to a process for making a device having a thin
functional substrate with opposing first and second surfaces, the process
includes bonding the first surface of the functional substrate to a carrier
substrate using a layer of bonding agent at the bonding interface, processing
the second surface of the functional substrate, and releasing the carrier
substrate from the functional substrate by applying an ultrasonic wave to the
bonding interface. Spec. i-f 11.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A process for making a device comprising a thin functional
glass substrate having a first surface, a second surface opposite
the first surface, and a thickness T 1 between the first surface
and the second surface, wherein Tl :S 500 µm, comprising the
following steps:
(A) bonding the first surface of the functional glass
substrate to a carrier substrate having a thickness T2 that is
greater than T 1 by using a layer of elastomer bonding agent at a
bonding interface including an outer periphery circumscribing a
bonding area positioned between the first surface of the
functional substrate and a bonding surface of the carrier
substrate; then
(B) processing the second surface of the functional
substrate; and then
(C) targeting an ultrasonic wave at a peripheral area of
the outer periphery of the bonding inteiface to initiate
de bonding at the peripheral area of the bonding interface to
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Application 12/548,685
achieve a preferential de bonding of the layer of elastomer
bonding agent from one of the functional glass substrate and the
carrier substrate to release the carrier substrate from the
functional substrate.
Claim 22, the remaining independent claim on appeal, similarly recites a
process for making a device having a thin functional substrate, but differs in
step (C) only in the stated result of the targeted ultrasonic wave at the
peripheral area of the outer periphery of the bonding interface. While claim
1 recites the initiated de bonding achieves a preferential de bonding of the
layer of elastomer bonding agent, claim 22 merely recites that the initiated
debonding begins releasing one substrate from the other.
Rejections
The following rejections under 35 U.S.C. § 103(a) are before us on
appeal:
Claims 1, 3, 6, 8, 10-12, 18, 19, 21, 22, 25, and 26 as unpatentable
over Knoche 3 in view of Ohya; 4
Claim 4 as unpatentable over Knoche and Ohya, further in view of
Rios· 5
'
Claim 5 as unpatentable over Knoche, Ohya, and Rios, further in view
of Kataoka; 6
Claim 7 as unpatentable over Knoche and Ohya, further in view of
Buchecker; 7
3 Knoche et al., DE 103 23 303 Al, published April 15, 2004, English-
language translation ("Knoche").
4 Ohya et al., US 6,337,288 Bl, issued January 8, 2002 ("Ohya").
5 Rios et al., US 2007/0148409 Al, published June 28, 2007 ("Rios").
6 Kataoka et al., US 5,362,226, issued November 8, 1994 ("Kataoka").
7 Buchecker et al., US 6,277 ,502 B 1, issued August 21, 2001 ("Buchecker").
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Application 12/548,685
Claim 9 as unpatentable over Knoche and Ohya, further in view of
McQueeny; 8
Claims 13, 14, 20, 23, and 24 as unpatentable over Knoche and Ohya,
further in view of Ledger; 9
Claim 15 as unpatentable over Knoche and Ohya, further in view of
DiZio· 1° and
'
Claims 16 and 17 as unpatentable over Knoche and Ohya, further in
view of Hotta. 11
ANALYSIS
The dispositive issue in this appeal is whether Appellants have
identified reversible error in the Examiner's finding that each of Knoche and
Ohya provides guidance for targeting an ultrasonic wave at a peripheral area
of the outer periphery of the bonding interface to initiate de bonding of the
substrates at this area. We answer this question in the affirmative and,
therefore, will not sustain the Examiner's obviousness rejection based on the
combination of Knoche and Ohya. Each of the remaining Section 103
rejections relies on this combination of Knoche and Ohya, adding various
tertiary prior art references to address dependent claim features. As the
Examiner does not rely on any of these additional references to remedy the
8 McQueeny et al., US 2006/0028014 Al, published February 9, 2006
("McQueeny").
9 Ledger et al., US 6,558,493 Bl, issued May 6, 2003 ("Ledger").
10 DiZio et al., US 6,455,152 Bl, issued September 24, 2002 ("DiZio").
11 Hotta et al., US 5,904,505, issued May 18, 1999 ("Hotta").
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Application 12/548,685
deficiency in the Knoche and Ohya combination, we likewise will not
sustain these remaining rejections.
The Examiner finds Knoche provides "very strong guidance ... for
targeting an ultrasonic wave (via ultrasound) (Description: paragraph 0052)
at a peripheral area of the outer periphery of the bonding interface to initiate
debonding." Final Act. 4. The Examiner further finds that "[i]n order for
the ultrasonic waves of Knoche to first reach the bonding interface, the
waves must inherently first contact any of the peripher(ies) (by definition,
outside limit( s)) of the bonding interface, before reaching the middle of said
interface." Id. In addition, the Examiner finds "it is generally well known in
the conventional electronic component-forming art, a field of endeavor to
which Knoche pertains (Description: paragraph 0054), to apply an ultrasonic
wave to the bonding interface ... in order to achieve a preferential de-
bonding of the layer of elastomer bonding agent." Id. The Examiner finds
this weH-known process is iiiustrated in Ohya, which the Examiner finds
teaches "targeting an ultrasonic wave at a peripheral area of the outer
periphery of the bonding interface to initiate debonding." Id. at 5.
As with Knoche, the Examiner finds that "[i]n order for the ultrasonic
waves of Ohya to first reach the bonding interface, the waves must
inherently first contact any of the peripher(ies) (by definition, outside
limit( s)) of the bonding interface, before reaching the middle of said
interface." Id. The Examiner finds Ohya teaches ultrasonic treatment via
immersion in a liquid bath, noting that Appellants also disclose ultrasonic
treatment via immersion in a liquid bath where the ultrasonic wave is
applied by a transducer from multiple directions via the walls of the
container. Id. at 6. Finally, the Examiner states that because "[t]he direction
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Application 12/548,685
in which said ultrasonic waves would travel in order to reach said interface
is identical to the direction in which said waves would travel to reach said
peripheries ... said waves would contact said peripheries before contacting
said interface." Ans. 5---6.
Appellants contend that the Examiner erred in rejecting claims 1 and
22 over the combination of Knoche and Ohya. Appeal Br. 5-6. Appellants
assert that Knoche merely discloses that ultrasound can be used to separate
the composite (thin substrate and support substrate). Id. at 6. Similarly,
Appellants assert that Ohya merely discloses separating the substrates by
immersion in water and/or amine, which may be combined with ultrasonic
treatment. Id. Appellants argue that neither of these references teach the
step of "targeting an ultrasonic wave at a peripheral area of the outer
periphery of the bonding interface to initiate debonding at the peripheral area
of the bonding interface." Id. In this regard, Appellants emphasize that the
claims require targeting the ultrasonic wave at the peripherai area of the
outer periphery of the bonding interface, asserting that the wave may be
targeted to other areas, such as the middle of the interface. Id. at 8.
As to the Examiner's findings that the ultrasonic waves of Knoche
and Ohya inherently first contact the periphery of the bonding interface
before reaching the middle of the interface, Appellants argue that even if
true, it does not follow that their waves must inherently be targeted at a
peripheral area of an outer periphery. Id. at 7. Appellants assert that the
waves may contact other areas, such as the central area, first. Id. Nor does
it follow, Appellants argue, that the waves inherently initiate debonding at
the peripheral area of the bonding interface. Id. Appellants assert that
debonding may initiate at other areas, such as the central area. Id.
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Appellants' arguments are persuasive of reversible error in the above
inherency findings of the Examiner. In general, a limitation is inherent "if it
is the 'natural result flowing from' the explicit disclosure of the prior art."
Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003)
(quoting Eli Lilly & Co. v. Barr Labs., Inc., 251F.3d955, 970 (Fed. Cir.
2001) ). "'Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient."' In re Oelrich, 666 F .2d 578, 581
(CCPA 1981) (quotingHansgirgv. Kemmer, 102 F.2d212, 214 (CCPA
1939) ). What is required is that the inherent feature inevitably results from
the disclosed steps. In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir.
2012).
We first note that Appellants' claims require targeting the ultrasonic
wave at the peripheral area of the outer periphery of the bonding interface.
Wlliie neither Appeiiants nor the Examiner offer a definition for the
transitive verb, "target," we note that its meaning is central to the issue
before us. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d
1343, 1351 (Fed. Cir. 2001) ("Only when a claim is properly understood can
a determination be made ... whether the prior art anticipates and/ or renders
obvious the claimed invention."). We find "target," as a transitive verb,
generally means "to aim an attack at someone or something" or "to direct an
action, message, etc., at someone or something." 12 We further find the
second definition is most consistent with Appellants' Specification. It is
12 http://www.merriam-webster.com/dictionary/target, last visited on
November 14, 2016.
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axiomatic that during examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Specifically, the Specification teaches the directional application of
ultrasonic waves to a targeted area of the bonding interface to achieve a
preferential debonding. Spec. i-f 88; Fig. 3. Moreover, the Specification
teaches that the ultrasonic wave can be targeted towards the edge area of the
bonding interface directly or via a waveguide. Id. at i-fi-189--90; Figs. 4 and 5.
In contrast, the Specification teaches an alternative embodiment in which the
ultrasonic wave is applied from multiple directions, i.e., is not targeted or
directed to a target area, via the walls of a container holding a liquid bath.
Id. at i-f 88; Fig. 2.
The Examiner relies on this latter embodiment in support of the
inherency finding. However, as correctly asserted by Appeiiants (Repiy Br.
7-8), the ultrasonic waves in Appellants' Figure 2 are not targeted at a
periphery of the bonding interface and, therefore, does not support the
inherency finding. In contrast, Appellants' Figures 3-5 and associated
description in the Specification describe embodiments with clear description
of targeting the ultrasonic wave at the periphery of the bonding interface.
Another difficulty with the Examiner's inherency finding is that it
fails to account for the claim requirement that the ultrasonic wave is
"targeted" at a peripheral area of the outer periphery of the bonding interface
to initiate de bonding. Thus, even if the Examiner were correct that an
ultrasonic wave inherently contacts the periphery of the bonding interface
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before reaching the middle of the interface, the Examiner has not shown that
debonding is initiated due to targeting the wave at the periphery.
Finally, the Examiner has not provided any evidence or scientific
reasoning in support of the position that the ultrasonic wave of Knoche and
Ohya must inherently first contact the periphery of the bonding interface
before reaching the middle of the interface. Indeed, again as depicted in
Appellants' Figure 2, the ultrasonic wave is simultaneously directed at all
surfaces of the substrates rather than targeted, aimed, or directed at any
particular area of the bonding interface.
Accordingly, we find that the Examiner's proposed combination of
Knoche and Ohya fails to teach or suggest a process as recited in claims 1
and 22 including a step of targeting an ultrasonic wave at a peripheral area
of the outer periphery of the bonding interface to initiate de bonding, and that
the Examiner's inherency finding to the contrary is not supported by the
preponderance of the evidence. The Examiner's obviousness rejection reiies
on this erroneous inherency finding, and as such, does not have sufficient
factual underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."), quoted with approval in KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
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claims 1and3-26 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Knoche and Ohya, alone or further combined with Rios,
Kataoka, Buchecker, McQueeny, Ledger, DiZio, and/or Hotta, is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
REVERSED
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