Ex Parte O

Patent Trial and Appeal Board

Jul 25, 2016

12305737 (P.T.A.B. Jul. 25, 2016)

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.
12/305,737 05/20/2010 Shawn O'Rourke 07-407-PCT-US 7333
20306 7590 07/25/2016
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
AU, BAC H
ART UNIT PAPER NUMBER
2822
MAIL DATE DELIVERY MODE
07/25/2016 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHAWN O’ROURKE
____________________

Appeal 2015-002741
Application 12/305,737
Technology Center 2800
____________________

Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3–10, 12–16, 22, 23, and 35, which
are all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The real party in interest is identified as the Arizona Board of Regents,
Acting for and on Behalf of Arizona State University. (Br. 3.)
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Application 12/305,737

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Claimed Subject Matter
The claimed invention generally relates to a method of attaching a
rigid carrier to a substrate using a sacrificial layer, and detaching the
substrate from the rigid carrier once fabrication of electronic components
and/or circuits is completed. (Title; Abstract.) Claim 1, reproduced below,
is illustrative:
1. A method for fabricating electronic components and/or
circuits on a flexible substrate, comprising,
forming a film comprising a fugitive material on a rigid
carrier or on the flexible substrate, wherein the rigid carrier is a
semiconductor wafer;
bonding the flexible substrate to the rigid carrier with
only the film positioned between the flexible substrate and the
rigid carrier;
fabricating electronic components and/or circuits on an
exposed surface of the flexible substrate; and
detaching the flexible substrate from the rigid carrier
after the fabricating, wherein detaching the flexible substrate
comprises heating the fugitive material to a temperature greater
than or equal to the decomposition temperature of the fugitive
material.

Rejections
Claims 1, 8, 9, 15, and 35 stand rejected under 35 U.S.C. § 103(a) as
obvious over Giesberg et al. (US 2006/0194363 A1; Aug. 31, 2006)
(“Giesberg”) and Kodaira et al. (US 2005/0202619 A1; Sep. 15, 2005)
(“Kodaira”). (Final Act. 2–5.)
Claims 4–7 stand rejected under 35 U.S.C. § 103(a) as obvious over
Giesberg, Kodaira, and Prack (US 2007/0000595 A1; Jan. 4, 2007). (Final
Act. 5–6.)
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Claims 3, 12–14, 16, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as obvious over Giesberg, Kodaira, and Fukui et al. (US
2005/0276934 A1; Dec. 15, 2005) (“Fukui”). (Final Act. 6–7.)
Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Giesberg, Kodaira, and Robinson et al. (US 2007/0169813 A1; Jul. 26,
2007) (“Robinson”). (Final Act. 8.)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred (Br. 4–11). We note Appellant has not filed a
Reply Brief to rebut the findings and conclusions presented in the
Examiner’s Answer. We are not persuaded by Appellant’s arguments. We
adopt as our own the findings and reasons set forth by the Examiner in the
action from which this appeal is taken and as set forth by the Examiner in
the Answer (Ans. 2–5). We highlight and address specific arguments and
findings for emphasis as follows.
With respect to independent claim 1, Appellant contends the
references cannot be combined because the combination would render
Giesberg’s methods ineffective. (Br. 7.) According to Appellants, using
Kodaira’s semiconductor wafer as a rigid carrier in Giesberg in the manner
suggested by the Examiner would result in changing Giesberg’s principle of
operation and Giesberg would be rendered unsatisfactory for its intended
purpose. (Br. 7–10.) Appellant asserts Giesberg requires the use of a
laser/light source for releasing a flexible substrate and adhesive from a rigid
carrier. (Br. 7 (citing Giesberg ¶¶ 25, 33).) Appellant then asserts
Giesberg’s use of a laser/light source requires a transparent substrate to be
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Application 12/305,737

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used but the semiconductor wafer carrier of Kodaira is not transparent. (Br.
8, 9 (citing Giesberg ¶¶ 9, 16, 39–40, 46–47).) Thus, Appellant concludes,
one of ordinary skill in the art would not use Kodaira’s semiconductor wafer
as Giesberg’s rigid carrier/substrate because Kodaira’s non-transparent
semiconductor wafer is incompatible with Giesberg’s methods. (Br. 8).
As the Examiner finds, and we concur, Giesberg teaches a glass rigid
carrier and Kodaira teaches glass and semiconductor wafers are
interchangeable carriers. (Ans. 3 (citing Kodaira ¶¶ 28, 55); Final Act. 2, 3
(citing Giesberg Figs. 1A-1D).) The Examiner further finds Giesberg
teaches the rigid carrier can be released/delaminated from a flexible
substrate by heating alone. (Ans. 3, 5 (citing Giesberg ¶ 14 (“This
delamination is generally achieved with gentle heating; however, it is not
excluded that an additional illumination step is done to initiate the cross-
linking within the adhesive layer at the side of the carrier.”)).) We agree.
Appellant argues Giesberg’s paragraph 14 teaches it is the initiation of
the reaction and not the full reaction that takes place by heating (Br. 9), and
therefore Giesberg still requires a transparent and rigid carrier. The
evidence does not support Appellant’s assertion. After noting initiation of
the reaction takes place by heating, Giesberg teaches that “[a]fterwards, the
carrier can be delaminated from the adhesive layer easily,” and that “[t]his
delamination is generally achieved with gentle heating.” (Giesberg ¶ 14.) In
addition, contrary to Appellant’s assertion that Giesberg’s method requires a
laser/light source and is thus incompatible with non-transparent carriers,
paragraph 14 of Giesberg teaches “an additional illumination step” is only
optional in Giesberg’s delamination method. (See Giesberg ¶ 14.)
Appellant has not presented persuasive evidence or argument to rebut the
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Examiner’s finding and reasoning that it would have been obvious to one of
ordinary skill in the art to use Kodaira’s semiconductor wafer in Giesberg’s
method.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) over Giesberg and Kodaira. Thus, we
sustain the rejection of claim 1, and, for the same reasons, the rejection of
claims 8, 9, and 15, which are not argued separately with particularity.
Appellant presents no additional arguments in support of claims 3–7,
10, 12–14, 16, 22, and 23, which depend from claim 1. (See Br. 6, 9, 10.)
Thus, for the same reasons as claim 1, we sustain the rejection of claims 4–7
under 35 U.S.C. § 103(a) as unpatentable over Giesberg, Kodaira, and Prack,
claims 3, 12–14, 16, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable
over Giesberg, Kodaira, and Fukui, and claim 10 under 35 U.S.C. § 103(a)
as unpatentable over Giesberg, Kodaira, and Robinson.
Regarding dependent claim 35, Appellant contends there is no
suggestion or motivation to modify Giesberg’s rigid glass carrier to be a
silicon wafer as claimed because such modification would change
Giesberg’s principle of operation and render Giesberg’s methods ineffective.
(Br. 7, 8.) Appellant’s support for this contention, however, relies upon
Appellant’s previous argument that Giesberg requires the use of a laser/light
source. As discussed supra, we are not persuaded by Appellant’s argument
that Giesberg would be inoperable for its intended purpose without a
laser/light source and transparent rigid carrier. (Br. 8, 9.)
Accordingly, we also sustain the Examiner’s rejection of claim 35
under 35 U.S.C. § 103(a) over Giesberg and Kodaira.

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Application 12/305,737

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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–10, 12–16,
22, 23, and 35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED