Ex Parte Yeap et alDownload PDFPatent Trial and Appeal BoardDec 14, 201714467229 (P.T.A.B. Dec. 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. 14/467,229 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 2 Appeal 2017-003224 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. 3 Appeal 2017-003224 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 4 Appeal 2017-003224 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 5 Appeal 2017-003224 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 6 Appeal 2017-003224 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.” 7 Appeal 2017-003224 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 8 Appeal 2017-003224 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 9 Appeal 2017-003224 Application 14/467,229 § 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 10 Copy with citationCopy as parenthetical citation