Ex Parte Liu et al

Patent Trial and Appeal Board

Mar 18, 2014

11191386 (P.T.A.B. Mar. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT AND TRIAL APPEAL BOARD
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Ex parte KUO-CHING LIU, PEI HSIEN FANG, DANIEL J. DERE,
JENN LIU, JIH-CHUANG HUANG, ANTONIO LUCERO,
SCOTT PINKHAM, STEVEN OLTROGGE, and
DUANE MIDDLEBUSHER

Appeal 2012-011384
Application 11/191,386
Technology Center 3700
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Before JEFFREY T. SMITH, ROBERT E. NAPPI, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2012-011384
Application 11/191,386

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 10-27. We have jurisdiction under 35 U.S.C. § 6.
Claim 10 is representative of the appealed subject matter and is
reproduced below:
10. A method for manufacturing die from a sapphire substrate,
comprising:

mounting the sapphire substrate on a stage, the sapphire substrate
having a top surface and a bottom surface, the bottom surface facing
the stage;

coupling pulses of laser energy having a wavelength between about
150 and about 560 nanometers at a repetition rate of greater than 5
kHz, directly into the top surface of the sapphire substrate by
absorption sufficient to induce ablation of sapphire at the top surface,
the pulses having a power density of less than 10 GW/cm2 per pulse,
a spot size, and a repetition rate inducing absorption of the laser
energy by the sapphire substrate;

causing the laser energy to impact the sapphire substrate in a scribe
pattern to cut scribe lines in the sapphire substrate; and

separating die defined by the scribe pattern from the sapphire
substrate.

Appellants, App. Br. 5, request review of the following rejections
from the Examiner’s final Office action1:
I. Claims 10-16, 19-22 and 25-27 rejected under 35 U.S.C. § 102(e) as
anticipated by Baird (US 2002/0149136 A1).

1 Mailed May, 25, 2011.
Appeal 2012-011384
Application 11/191,386

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II. Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Baird and Tompkin (US 5,882,463).
III. Claims 10-16 and 18-27 rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Roberts (US 5,362,681) and Baird.
IV. Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Roberts, Baird and Tompkin.
OPINION
Rejections I & II2
The dispositive issue is: Did the Examiner err in determining that
Baird describes a method of manufacturing a die from a sapphire substrate
including the required combination of wavelengths, repetition rates and
power density as required by the subject matter of independent claim 10?
Appellants argue that while Baird’s claims recite sapphire, they do not
describe the claimed combination of ranges of wavelengths, repetition rates
and power density. (App. Br. 7-8). Thus, Appellants argue Baird does not
sufficiently describe a sapphire substrate in conjunction with claimed
parameters. (App. Br. 7).
A claim is not anticipated by a reference when independent picking
and choosing is required to arrive at the claimed invention. See In re Arkley,
455 F.2d 586, 587 (CCPA 1972). The Examiner found that Baird discloses
a method for manufacturing a die from sapphire by referencing the abstract
and the claims. (Ans. 4-5). The Examiner found that various portions of the
Baird disclosure describes the combination of wavelengths, spot size,

2 We limit our discussion to independent claim 10. Our analysis also applies
to claim 26.
Appeal 2012-011384
Application 11/191,386

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repetition rates and power density required by the subject matter of
independent claim 10. (Id.).3
In support of the obviousness rejection, the Examiner relies on Baird’s
allegedly anticipatory disclosure. (Ans. 7-8). The Examiner has failed to
present a rationale that the operating parameters described in Baird
disclosure would have been obvious for use on a sapphire substrate. In the
absence of such analysis we cannot sustain the Examiner’s obviousness
rejection.
Rejections III & IV4
The dispositive issue is: Did the Examiner err in determining that it
would have been obvious to a person of ordinary skill in the art to replace
the saw cutting process of Roberts with the laser scribing process of Baird.
The Examiner found that Roberts discloses a method for
manufacturing a die from a substrate by using a saw blade to cut the top
surface of a substrate mounted on a stage and separating the die defined by
the scribe pattern from the substrate. (Ans. 9). The Examiner also found
that Roberts differed from the claimed invention in the description of the
substrate as sapphire and all of the laser-related steps. (Id. at 10). The
Examiner relied on Baird for the same information discussed in the previous
anticipation rejection to remedy the deficiency in Roberts. (Id. at 10-13).

3 The Examiner has not asserted that Baird’s description of the claims in
combination with the disclosure renders the appealed subject matter obvious.
While, the act of picking, choosing and combining various disclosures in a
reference, while improper in a § 102 rejection, may be entirely proper in a §
103 rejection. In re Arkley, 455 F.2d at 587.
4 We limit our discussion to independent claim 10. Our analysis also applies
to claim 26.
Appeal 2012-011384
Application 11/191,386

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We cannot sustain the Examiner’s obviousness rejections. We agree
with Appellants (App. Br. 11-12) that the Examiner has not adequately
explain the rationale for eliminating Roberts’ saw cutting mechanism and
replacing it with a laser as described by Baird. Also as stated above, the
Examiner has failed to present a rationale that the operating parameters
described in Baird disclosure would have been obvious for use on a sapphire
substrate. In the absence of such analysis we cannot sustain the Examiner’s
obviousness rejections.
Accordingly, we do not sustain the Examiner’s prior art rejections.
ORDER
The decision of the Examiner to reject claims 10-27 is reversed.

REVERSED

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