Ex Parte Yeap et al

Patent Trial and Appeal Board

Dec 14, 2017

14467229 (P.T.A.B. Dec. 14, 2017)

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.
14/467,229 08/25/2014 Lim Lay Yeap 1012-0935 / 2014P51233
us
3091
57579 7590 12/18/2017
MT TRPHY RTTAK Rr HOMTT T FR/TNFTNFON TFrHNOT OFTFS
EXAMINER
1255 Crescent Green
Suite 200
CIESLEWICZ, ANETA B
CARY, NC 27518 ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIM LAY YEAP, TAI CHIEW LI, YONG WAE
CHET, TAY WEE BOON, and SEE THIONG ZHOU
Appeal 2017-003224
Applicationl 4/467,2291
Technology Center 2800
Before KAREN M. HASTINGS, WESLEY B. DERRICK, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL2
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—15. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Infineon Technologies
AG. Appeal Br. 2.
2 In this opinion, we refer to the Final Office Action dated November 17,
2017 (“Final Act.”), the Appeal Brief filed June 17, 2016 (“Appeal Br.”), the
Examiner’s Answer dated October 26, 2016 (“Ans.”), and the Reply Brief
filed December 21, 2016 (“Reply Br.”).
Appeal 2017-003224
Application 14/467,229
STATEMENT OF THE CASE
Appellants describe the invention as relating to a leadframe that forms
the base of an IC package. Spec. 12. Appellants’ Specification teaches
leads and support structures chemically etched into the metal sheet of the
leadframe strip and states that its design seeks to solve problems relating to
metal smearing and burrs during sawing of the leadframe strip. Id. 3^4.
Claim 1, reproduced below with emphases added to certain key recitations,
is illustrative of the claimed subject matter:
1. A leadframe strip, comprising:
a plurality of leads chemically etched into a metal sheet;
a plurality of support structures chemically etched into
the metal sheet; and
a plurality of connecting structures chemically etched into
the metal sheet,
wherein each of the connecting structures is integrally
connected at a first end to one of the leads and integrally
connected at a second end to one of the support structures so that
the leads are held in place by the support structures,
wherein the width of each connecting structure is at a
minimum between the first and second ends of that connecting
structure, increases from the minimum in a direction toward the
first end, and increases from the minimum in a direction toward
the second end.
Appeal Br. 14 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Noe
Miks et al.
(hereinafter “Miks”)
US 3,859,718
US 6,798,047 B1
Jan. 14, 1975
Sept. 28, 2004
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Application 14/467,229
REJECTIONS
The Examiner maintains3 the following rejections on appeal:
Rejection 1. Claims 1—3 and 5—7 under 35 U.S.C. § 102 as
anticipated by Noe. Final Act. 3.
Rejection 2. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Noe. Id. at 10.
Rejection 3. Claims 8—15 under 35 U.S.C. § 103(a) as unpatentable
over Noe in view of Miks. Id. at 11.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
3 The November 17, 2015, Final Office Action rejects claims 1—17, but the
rejection of claims 16 and 17 is mooted by Appellants’ Response to Final
Office Action filed February 17, 2016, cancelling these claims which was
entered by the Examiner. 37 C.F.R. § 41.31(c) (“An appeal, when taken, is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and entered by the
Office.”). Appellants identify the rejection of claims 1, 4, 8, and 12 as the
grounds to be reviewed on appeal. Appeal Br. 5. We thus focus our
discussion on these four claims in deciding the appeal as to claims 1—15.
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Application 14/467,229
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
The Examiner finds that Noe teaches each recitation of claim 1 and
therefore anticipates claim 1. Final Act. 3. The Examiner created a graphic
that illustrates this position, and we reproduce that graphic below. Ans. 7
Office-Annotated Version of Noe's Fig. 2
(Einai Office action)
2:2: iead
2:3 and 23A: support structure
see inset above: connecting structure
The graphic above depicts a portion of Noe Figure 2 as well as an enlarged
portion of Noe Figure 2 as annotated and enlarged by the Examiner. The
Examiner finds that Noe Figure 2 depicts a leadffame strip where each area
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Application 14/467,229
as exemplified by the area circled by the Examiner includes (1) a lead 22,
(2) support stmcture 23 and 23 A, and (3) a connecting structure that (a) is
connected at one end to a lead, (b) is connected at the other end to the
support structure, and (c) has the geometry recited in claim 1. Final Act. 3—
5; Ans. 6—7.
Appellants argue that what the Examiner identifies as “support
structure” at 23 A is not support structure and is instead a portion of Noe’s
lead and also argue that Noe Figure 2 at structure 22 is a lead end rather than
being a lead. Appeal Br. 8—9; see also Reply Br. 3^4. Appellants
emphasize that Noe teaches that what the Examiner labels 23 A is, after
cutting, part of Noe’s lead and cannot be considered support structure.
Appeal Br. 10-11. We agree with Appellants that the teachings of Noe and
the present Specification are different in that Noe teaches cutting Figure 2’s
lead frame strip across tie bars 23. Noe 3:22—24 (“Tie bars 23 holding the
leads in place are trimmed away after encapsulation.”). Thus, after cutting,
Noe teaches that what the Examiner labels 23 A will be utilized as part of a
lead. In contrast, the Specification teaches cutting across connecting
structures 110. See, e.g., Spec. 117 (explain Fig 2A), Fig. 2A (depicting
sawing street 114 and Wsaw corresponding to the thickness of the saw blade).
This point of distinction, however, does not address the question at
hand: have Appellants established that the Examiner erred in determining
that claim 1 is not patentably distinct from the pre-cut lead frame taught by
Noe? See, e.g., Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover what a device is, not
what a device does.”). In other words, the appropriate comparison is
between the physical structure taught by Noe Figure 2 and the structure of
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Application 14/467,229
Appellants’ claim 1. As explained below, Appellants’ arguments do not
persuasively identify such error.
Appellants argue, for example, that what the Examiner identifies as
“support structure” in Noe (23 and 23 A in the figure reproduced above) is
not support structure as recited by claim 1. To support this argument,
Appellants urge that “support structure” denotes “structure that provides
support to leads during a packaging process.” Appeal Br. 9; see also Reply
Br. at 3 (citing Spec. 13).
Appellants do not persuasively argue that there is a physical
difference in, for example, material or thickness between what the Examiner
identifies as Noe’s support structure and “support structure” as recited in
claim 1. Rather, Appellants argue that while Noe’s tie bars are support
structure, the region the Examiner identifies as 23 A is part of Noe’s leads
and that 23 A is not later removed or trimmed. Appeal Br. 9—10.
Appellants’ argument is thus based on what Noe teaches is the future
purpose/function of 23A rather than comparing Noe’s structure—at the point
in time it is depicted by Noe Figure 2—with claim 1 ’s structure. In other
words, Appellants’ argument relies on a functional claim construction of
“support structure” and relies on drawing a functional distinction between
claim 1 ’s recited “support structure” and Noe Figure 2’s regions 23 and 23 A.
While a patent applicant may recite features structurally or
functionally, “choosing to define an element functionally, i.e., by what it
does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). In particular, where there is reason to believe that prior art structure
is inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
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Application 14/467,229
claimed structure from the prior art structure. See id.', In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to
show that prior art structures were not inherently capable of functioning as
claimed invention).
Here, the Examiner’s finding that regions 23 and 23A are a support
structure (see, e.g., Final Act. 3^4; Ans. 6—7) is supported by the
preponderance of the evidence which establishes reason to believe that what
the Examiner identifies as regions 23 and 23 A of Noe Figure 2 is capable of
being used as support structure. In particular, if Noe’s leadframe strip were
cut across what the Examiner identifies as “connecting structure,” then
regions 23 and 23A together would serve to support what the Examiner
identifies as leads (i.e., Noe Figure 2 item 22) during the pre-cutting aspect
of the packaging process. This functionality is similar to the support
structure 108 of Appellants’ Figure 1 (i.e., providing support prior to and
during cutting but not after cutting).
Appellants further argue that removing region 23A would render
Noe’s lead inoperable. Appeal Br. 10—11. Appellants’argument, however,
at most establishes that cutting Noe across what the Examiner identifies as
“connecting structure” would not form the same lead as contemplated by
Noe. This argument pertains to future intended use; it does not persuasively
distinguish the Noe structure before cutting from the structure of claim 1
(i.e., also a pre-cut structure). Because Appellants present no persuasive
argument that regions 23 and 23 A could not perform the support structure
function or are structurally different from support structure, Appellants do
not meet their burden of showing a patentable distinction between regions 23
and 23A and claim 1 ’s recited “support structure.”
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Application 14/467,229
Similarly, claim 1 ’s recitation of a “lead” relates to intended use and
function rather than structure. See Reply Br. 2 (“the term ‘lead’ is used to
denote an element that provides external electrical connection for a
semiconductor die or similar.”). The Examiner’s finding that region 22
(identified by Noe as being a “lead end”) is a lead (see, e.g., Final Act. 3^4;
Ans. 7—8) is supported by the preponderance of the evidence which
establishes reason to believe that what the Examiner identifies as region 22
could be used as a lead. If region 22 were to be cut off, the result would be a
small conductive strip of metal. While the shape of region 22 may not be
the same final lead shape contemplated by Noe, the preponderance of the
evidence establishes that the region 22 could nonetheless be used as a lead in
a different context. In particular, because Noe describes region 22 as a “lead
end” (Noe 3:16—19), the evidence supports that the region has, for example,
appropriate material properties and thickness to serve as a lead. Appellants
argue, as explained above, that an isolated region 22 may not be able to
serve as a lead in the final application described by Noe, but Appellants do
not persuasively establish that region 22 could not function as a lead in the
context of some other future use. Appellants therefore do not persuasively
establish that the “lead” function as recited by claim 1 patentably
distinguishes the claimed structure from the prior art structure.
Appellants also argue that the Examiner improperly delineates Noe’s
Figure 2. Appeal Br. 10. This argument is not persuasive because it is
Appellants’ claim that delineates an otherwise one-piece solid structure
largely based on function after a future cut is made. As explained above, the
Examiner properly compares claim 1 structure to structure taught by Noe.
The cases Appellants cite regarding delineation are distinguishable. See Ex
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Application 14/467,229
parte Denison, Appeal 2009-004110 (BPAI Jan. 21, 2010) (holding that
Examiner erred by relying on one structure in the prior art to meet two claim
recitations); Ex parte Williams, Appeal 2009-010843 (BPAI, Feb. 24, 2010)
(holding that Examiner erred by holding that a foam block was enclosed in
part by backrest portion where reference evidences that block was entirely
enclosed by headrest section). Because Appellants do not identity reversible
error, we sustain the Examiner’s rejection of claims 1—3 and 5—7.
Claim 4 depends from claim 2. Claim 2 recites “[t]he leadframe strip
of claim 1, wherein each of the connecting structures has opposing curved
sidewalls, and where the distance between the opposing curved sidewalls of
each connecting structure defines the width of the connecting structure.”
Appeal Br. 14 (Claim App’x). Claim 4 recites “[t]he leadframe strip of
claim 2, wherein each of the opposing curved sidewalls forms an arc, and
wherein the angle formed by each of the arcs is greater than 90 degrees and
less than 180 degrees.” Id. The Examiner rejects claim 4 as obvious over
Noe because “varying the angle of the arc so that it would fall within the
claimed range would have been within the capabilities of one of ordinary
skill in the art depending on the design requirements.” Final Act. 10.
Appellants argue that the rejection is in error because the Examiner
cites no prior art to support that this claim aspect is obvious. Appeal Br. 12—
13. The predecessor to our reviewing court, however, has affirmed an
obviousness rejection where “Appellants have presented no argument which
convinces us that the particular configuration of their container [i.e., the
container’s shape] is significant or is anything more than one of numerous
configurations a person of ordinary skill in the art would find obvious.” In
re. Dailey, 357 F.2d 669, 672-73 (C.C.P.A. 1966); see also MPEP
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§ 2144.04(IV)(B). Similarly, the Examiner finds here that Appellants
identify no criticality of the angle recited by claim 4 (Ans. 10), and
Appellants do not dispute this finding. Accordingly, Appellants’ argument
does not identify reversible error in the rejection of claim 4.
Claim 8 recites a method of manufacturing a lead frame strip where
the strip has a structure similar to that recited by claim 1. Appellants’
argument with respect to claim 8 is substantively the same as for claim 1
(Appeal Br. 12), and does not identify error for the reasons discussed above.
Appellants’ argument with respect to claim 12 is substantively the
same as with respect to claim 4 (Appeal Br. 13), and it does not identify
error for the reasons discussed above.
Not being apprised of reversible error, we sustain the Examiner’s
rejection of claims 8—15.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 1—15.
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
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