10925775 (B.P.A.I. May. 17, 2012)

Ex Parte Sterrett et al

Board of Patent Appeals and InterferencesMay 17, 2012

10925775 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/925,775 08/25/2004 Terry L. Sterrett ITL.1177US (P18813) 9975 21906 7590 05/18/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER RICHARDS, NORMAN DREW ART UNIT PAPER NUMBER 2895 MAIL DATE DELIVERY MODE 05/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TERRY L. STERRETT, LEONEL R. ARANA, and DEVENDRA NATEKAR ____________ Appeal 2009-015197 Application 10/925,775 Technology Center 2800 ____________ Before JOHN A. JEFFERY, JEFFREY S. SMITH, and BRIAN J. MCNAMARA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015197 Application 10/925,775 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 12-16, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to thinning semiconductor wafers. Title. Representative Claim 12. A fixture comprising: a support surface; and a two dimensional array of evenly spaced protrusions extending upwardly from said support surface, said protrusions to engage mating grooves in a wafer. Prior Art Akram US 2003/0092220 A1 May 15, 2003 Guire US 7,361,724 B2 Apr. 22, 2008 (filed Jan. 15, 2004) Examiner’s Rejections Claims 12 and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Akram. Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Akram and Guire. Appeal 2009-015197 Application 10/925,775 3 Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims 12 and 13. PRINCIPAL ISSUE Did the Examiner err in finding that Akram describes a wafer within the meaning of claim 1? ANALYSIS Section 102 rejection of claims 12 and 16 Appellants contend that paragraph 57of Akram does not describe a wafer. App. Br. 10. In particular, Appellants contend that the wafer with dice shown in Figure 1 and discussed in paragraph 56 of Akram are singulated from a wafer, but are not a wafer. Reply Br. 1. The Examiner finds that the term “wafer” recited in claim 12 encompasses item 40 as well as other substrates described by Akram. Ans. 5. We agree with the Examiner. For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element of the claimed invention must be identically shown in a single reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification. Appeal 2009-015197 Application 10/925,775 4 Id. Although Appellants allege that anyone skilled in the art knows a wafer is a round disk on which are formed a large number of dice that may be separated or singulated (Reply Br. 1), Appellants have not provided a definition of wafer in the Specification that excludes item 40 or the substrates described by Akram. Appellants contend that paragraph 43 of Akram says nothing about attaching a die to a wafer which includes thousands of unsingulated dice. Reply Br. 2. Appellants’ arguments are inconsistent with paragraph 18 of Akram, which discloses that Akram’s invention can be applied to individual substrates or to groups of substrates, such as semiconductor devices on an undiced or unsingulated wafer. Appellants contend that claim 12 calls for mating grooves in the wafer. App. Br. 10. The Examiner finds that protrusions described by Akram engage mating grooves on a wafer. Ans. 3. Appellants have not provided evidence or persuasive argument to rebut the Examiner’s finding. We agree with the findings of fact made by the Examiner in the Examiner’s Answer. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner for the reasons given by the Examiner in the Examiner’s Answer. We sustain the rejection of claims 12 and 16 under 35 U.S.C. § 102. Section 103 rejection of claims 13-15 Appellants contend that nothing in the cited art suggests any reason why one skilled in the art would pick nitinol from the millions of support Appeal 2009-015197 Application 10/925,775 5 materials to place in association with protrusions on a fixture. App. Br. 10. The Examiner finds that one of ordinary skill in the art would be able to exchange the polymer of Akram with the nitinol taught by Guire. Ans. 5. Appellants have not provided evidence or persuasive argument to show that exchanging the polymer of Akram with the nitinol of Guire was “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). We sustain the rejection of claims 13-15 under 35 U.S.C. § 103. CONCLUSIONS OF LAW The Examiner did not err in finding that Akram describes a wafer within the meaning of claim 1. DECISION The rejection of claims 12 and 16 under 35 U.S.C. § 102(b) as being anticipated by Akram is affirmed. The rejection of claims 13-15 under 35 U.S.C. § 103(a) as being unpatentable over Akram and Guire 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). See 37 C.F.R. § 41.50(f). AFFIRMED rwk