Ex Parte Middlekauff et alDownload PDFPatent Trial and Appeal BoardJul 8, 201613225263 (P.T.A.B. Jul. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/225,263 09/02/2011 64948 7590 07112/2016 VIERRA MAGEN/SANDISK CORPORATION 575 MARKET STREET SUITE 3750 SAN FRANCISCO, CA 94105 FIRST NAMED INVENTOR Warren Middlekauff 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. SAND-03091US2 1179 EXAMINER ERDEM, FAZLI ART UNIT PAPER NUMBER 2826 NOTIFICATION DATE DELIVERY MODE 07/12/2016 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): patents@vierramagen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WARREN MIDDLEKAUFF, ROBERT MILLER, and CHARLIE CENTOFANTE Appeal2014-007885 Application 13/225,263 Technology Center 2800 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Background The subject matter on appeal relates to integrated circuit products and methods of making such products, including printing ink over test contacts provided with the integrated circuit products. Spec. i-f 1 and Abs. Claim 1 is 1 Appellants identify SanDisk Corporation as the real party in interest. App. Br. 3. Appeal2014-007885 Application 13/225,263 representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 1. An integrated circuit product produced in a batch by operations that include at least: providing a multi-instance leadframe or substrate having a plurality of instances, each of the instances of the leadframe or substrate having test contacts and input/output (I/O) contacts; attaching one or more dies to each of the instances on at least one side of the multi-instance leadframe or substrate; electrically connecting each of the one or more dies to the respective instance of the leadframe or substrate; thereafter encapsulating together the plurality of instances on the at least one side of the multi-instance leadframe or substrate with a molding compound, wherein the test contacts and the I/O contacts remain exposed; subsequently singulating each of the plurality of instances; testing each of the plurality of instances using the exposed test contacts; and camouflaging the test pads by printing ink over the exposed test contacts on the plurality of instances, whereby at least one of the plurality of instances being produced by said operations is said integrated circuit product. App. Br. 13 (Claims App'x). The other independent claims, claims 8 and 14, recite an integrated circuit product and a method of forming an integrated circuit product, respectively, comprising, inter alia, "camouflaging the test contacts by printing ink over the exposed test contacts." Id. at 14--15. 2 Appeal2014-007885 Application 13/225,263 Takiar Woudenberg Kadomatsu Miks The References US 2005/0013106 Al US 2005/0195265 Al US 2005/0200676 Al US 7,293,716 Bl The Rejections Jan.20,2005 Sept. 8, 2005 Sept. 15, 2005 Nov. 13, 2007 The Examiner maintains the following rejections on appeal: 1. Claims 1-3, 5-8, 10-14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Takiar, Miks, and Woudenberg; and 2. Claims 4, 9, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Takiar, Miks, Woudenberg, and Kadomatsu. OPINION Appellants argue the claims as a group, relying on limitations common to independent claims 1, 8, and 14, and do not present arguments for the separate patentability of the dependent claims. App. Br. 8-11. We, therefore, limit our discussion to representative claim 1, which controls our rulings as to both grounds of rejection. After having considered the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify reversible error, and we affirm the Examiner's§ 103 rejections for the reasons expressed in the Final Action and the Answer. We add the following primarily for emphasis. Appellants argue that the rejections should be reversed because the applied prior art references do not disclose "camouflaging the test pads" as recited in each of the independent claims. Id. at 8. In particular, Appellants 3 Appeal2014-007885 Application 13/225,263 argue that ivliks discloses "covering" the test pads, and that Appellants' specification indicates that covering and camouflaging are different concepts. Id. at 9-10. It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. Here, as the Examiner explains, the disputed limitation "camouflaging the test pads by printing ink over the exposed test contacts" in independent claim 1 encompasses, and does not distinguish over, Miks' s disclosure of covering the test pins (i.e., metal contacts) by coating them with ink. Ans. 10-11; Miks 2:58-59, 5:61---67, Fig. 4. Notably, Appellants do not direct our attention to any definition of the disputed phrase in the specification, or to any persuasive reasoning or credible evidence that refutes the Examiner's determination or supports the narrow interpretation of "camouflaging the test pads by printing ink over the exposed test contacts" that they contend excludes test contacts coated with ink.2 Indeed, as the Examiner explains, 2 We are not persuaded by Appellants' argument that the specification uses the terms "covering" and "camouflaging" to connote different concepts. App. Br. 9-10. Further, we concur with the Examiner that coating the test contacts with ink, as disclosed in Miks, covers, masks, and necessarily camouflages, the contacts. Ans. 11; Miks Fig. 4 (depicting test contacts covered or masked by ink); see also Spec. i-f 32 (coating the test contacts with ink results in contacts that are "not easily perceptible to end users of the memory card"). 4 Appeal2014-007885 Application 13/225,263 Appellants' specification discloses camouflaging the test contacts in a similar manner to Miks, i.e., applying ink over the contacts. Ans. 11; see Spec. i-f 32. Accordingly, we affirm the Examiner's§ 103 rejections with respect to all of the claims on appeal. DECISION/ORDER The Examiner's rejections of claims 1-17 under 35 U.S.C. § 103(a) are 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 5 Copy with citationCopy as parenthetical citation