SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

May 25, 2021

2020004061 (P.T.A.B. May. 25, 2021)

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.
15/988,718 05/24/2018 Michael J. SEDDON ONS02889US 6081
132194 7590 05/25/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
AHMAD, KHAJA
ART UNIT PAPER NUMBER
2813
NOTIFICATION DATE DELIVERY MODE
05/25/2021 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):
ipdocket@iptech.law
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. SEDDON
Appeal 2020-004061
Application 15/988,718
Technology Center 2800
Before KAREN M. HASTINGS, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–8, 10–16, and 18–20. See Final
Act. 3, 5, 9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “Semiconductor
Components Industries, LLC.” Appeal Br. 3.
Appeal 2020-004061
Application 15/988,718

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CLAIMED SUBJECT MATTER
Claims 1 and 8, reproduced below, are illustrative of the claimed
subject matter:
1. A method of singulating a plurality of semiconductor die,
the method comprising:
forming a damage layer beneath a surface of a die street,
the die street connecting a plurality of semiconductor die, the
plurality of semiconductor die formed on a semiconductor
substrate;
ablating at least a portion of the material of the die street
using a laser; and
sawing the die street after forming the damage layer to
singulate the plurality of semiconductor die.
8. A method of singulating a plurality of semiconductor die,
the method comprising:
forming a damage layer beneath a surface of a die street,
the die street connecting a plurality of semiconductor die, the
plurality of semiconductor die formed on a semiconductor
substrate; and
sawing the die street while applying sonic energy
between 20 kHz to 3 GHz to a spindle coupled with a saw blade
performing the sawing of the die street after forming the
damage layer to singulate the plurality of semiconductor die.

Claims Appendix (Appeal Br. 22, 23).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Chin US 2005/0101109 A1 May 12, 2005
Ohnishi US 2006/0032332 A1 Feb. 16, 2006
Morikazu US 2018/0161921 A1 June 14, 2018

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Application 15/988,718

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REJECTIONS
The Examiner maintains the following rejections:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–4, 6, 7 103 Morikazu, Chin
8, 10–12, 16, 20 103 Morikazu, Ohnishi
13–15, 18, 19 103 Morikazu, Ohnishi, Chin

OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies 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 having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant has identified reversible,
and we affirm the Examiner’s § 103 rejection for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Claim 1
In rejecting claim 1, the Examiner acknowledges that “Morikazu does
not explicitly teach ablating at least a portion of the material of the die street
using a laser” and relies on Chin for the teaching. Final Act. 3. Appellant
does not dispute the prior art teachings but argues instead that “Morikazu
and Chin each disclose their own methods of singulating a substrate that are
complete in and of themselves and obviate the need to add any additional
steps” and the Examiner’s modification would “decrease the efficiency of
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either method.” Appeal Br. 14. Appellant’s argument is unpersuasive
because it is unsupported by evidence. See Johnston v. IVAC Corp., 885
F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for
evidence.”).
Appellant next argues that the Examiner’s proposed combination
would change the principle of operation because Morikazu teaches away
from “the use of a breaking tool or fracturing means . . . whereas Chin
teaches a method that uses a breaking tool/fracturing means.” Appeal Br. 14.
We are not persuaded by Appellant’s argument because it does not address
the Examiner’s obviousness analysis. Specifically, the Examiner finds that
modifying Morikazu’s method “by ablating at least a majority of the
material of the die street using a laser or scratching or scribing using a
pointed stylus according to the teaching of Chin . . . provides an
efficient/precision method of singulating the semiconductor substrate by
sawing of Morikazu.” Final Act. 12. Appellant’s argument does not identify
reversible error in the Examiner’s rationale in support of the rejection and is
unpersuasive.
Moreover, “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from . . . alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The
record before us does not show that either reference teaches away from the
invention. Appellant does not explain why the principles of operation in the
prior art references are limited to certain prior art embodiments. The
rejection of claim 1 is sustained.
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Claims 8 & 162
From the outset, we note that Appellant’s briefing with regard to
claims 8 and 16 does not comply with 37 C.F.R. § 41.37(c)(1)(iv), which
requires that “any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claims by number.”
Appellant argues that the Examiner reversibly erred in rejecting
claims 8 and 16 because “Ohnishi is silent as to what frequencies are
employed” and the Examiner’s proposed combination changes the principle
of operation because “[t]he principle of operation of Ohnishi is
ultrasonically assisted saw-only.” Appeal Br. 17.
Appellant’s argument is unpersuasive because Appellant
acknowledges that “Ohnishi discloses a cutting tool that has a blade that can
be vibrated with ultrasonic energy during cutting” and does not dispute the
Examiner’s finding that ultrasonic encompasses frequency above 20 kHz
which overlaps with the frequency recited in claims 8 and 16. Compare
Appeal Br. 16–17, with Final Act. 6. Appellant’s argument is unpersuasive
also because it does not explain how Ohnishi’s principle of operation is
changed by combination with Morikazu given that Ohnishi’s principle of
operation is limited to the embodiment of an ultrasonic saw. “It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) (citing In re Etter,
756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Appellant also does not

2 Appellant argues against the rejection of claims 8 and 16 as a group. See
Reply Br. 16–18. These claims stand or fall together. See id.; see also 37
C.F.R. § 41.37(c)(1)(iv).
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address the Examiner’s rationale in support of the rejection. That is, the
Examiner reasons that it would have been obvious combine the method of
Morikazu with “applying sonic energy within a frequency such as between
20 kHz to 3 GHz to a spindle coupled with a saw blade performing the
sawing of the die street . . . according to the teaching of Ohnishi in order to
have better cutting performance.” Final Act. 6. Appellant does not identify
reversible error in the Examiner’s reasoning which is supported by evidence
in the record. Compare Appeal Br. 16–18 (arguing, for example that
Morikazu is published 12 years after Ohnishi, and that “there is no teaching
in Ohnishi that applying a laser beam into the material of the die street prior
to sawing would be desirable” without addressing the Examiner’s rationale),
with Final Act. 6. The Examiner’s explanation of the reasons a person of
ordinary skill in the art would have had to combine the prior art teachings is
sufficient taken in light of “the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
Appellant’s argument that “the sawing process is fundamentally
unpredictable and whether ultrasonically assisted sawing will even work to
saw any particular substrate type depends on a significant amount of
experimentation” (Appeal Br. 18) is unpersuasive for lack of evidentiary
support showing that the art is unpredictable. “Attorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989).
Claims 6 & 14
From the outset, we note that Appellant’s briefing with regard to
claims 6 and 14 does not comply with 37 C.F.R. § 41.37(c)(1)(iv), which
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requires that “any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claims by number.”
The dispositive claim limitation with regard to claims 6 and 14 is
“ablating at least a majority of the material of the die street using a laser.”
Appellant argues that the Examiner reversibly erred in rejecting claims 6 and
14 because the prior art illustrations show ablating less than a majority of the
substrate which includes the die street. Appeal Br. 19. The Examiner
responds that Appellant’s argument is incommensurate in scope with the
claim language which recites “the material of the die street” that is ablated.
Ans. 9. Appellant argues that the Examiner’s interpretation is too narrow
because “it is the semiconductor substrate material in the die street that is
what keeps the die together.” Reply Br. 6. Appellant’s argument is
unpersuasive because it does not explain why the plain language of the claim
should be interpreted to mean that the recited die street is interchangeable
with a substrate or substrate material.
Claims 7, 15, & 19
From the outset, we note that Appellant’s briefing with regard to
claims 7, 15, and 19 does not comply with 37 C.F.R. § 41.37(c)(1)(iv),
which requires that “any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claims by number.”
The dispositive claim limitation with regard to claims 7, 15, and 19 is
“before sawing the die street, scribing a portion of the material of the die
street using a stylus.” Appellant argues that paragraph 7 of Chin “mentions
sawing and scribing as mutually exclusive forms of grooving” and therefore
does not teach or suggest this limitation. Reply Br. 6; see also Appeal Br.
20. Appellant’s argument is unpersuasive because it is incommensurate in
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scope with the claim language which requires “sawing the die street” instead
of sawing to form a groove. Appellant’s argument is unpersuasive also
because it does not identify error in the Examiner’s finding that Figures 3
and 4 of Chin (combined with all the cited prior art) teach or suggest this
limitation. Compare Reply Br. 6, with Ans. 10.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7 103 Morikazu, Chin 1–4, 6, 7
8, 10–12,
16, 20
103 Morikazu, Ohnishi 8, 10–12,
16, 20

13–15, 18,
19
103 Morikazu, Ohnishi,
Chin
13–15, 18,
19

Overall
Outcome
1–4, 6–8,
10–16, 18–
20

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED