Ex Parte Sun et al

Patent Trial and Appeal Board

Nov 28, 2017

13429141 (P.T.A.B. Nov. 28, 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.
13/429,141 03/23/2012 Sheng Sun 131815-228234 8144
149776 7590 11/30/2017
SrTiwahe Williamson Rr Wvatt/SnnPower
EXAMINER
P AC WEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
RILEY, JONATHAN G
PORTLAND, OR 97204 ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
11/30/2017 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):
IPDocketing @ S CHWABE.com
ghoover@schwabe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHENG SUN, FERNANDO BOYON, ROY JOSEPH LEGASPI,
MATTHEW DAWSON, and CHUCK STONE
Appeal 2017-001370
Application 13/429,141
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants1 seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1, 2, 7, and 9.2 We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
1 The Appellants identify SunPower Corporation, as the real party in interest.
(App. Br. 3.)
2 Claims 3-6, 8, and 10-24 have been cancelled.
Appeal 2017-001370
Application 13/429,141
SUMMARY OF DECISION
We AFFIRM but denominate the affirmance as a NEW GROUND OF
REJECTION.
THE INVENTION
Claim 1 is illustrative, and is reproduced below with line breaks and
indentation added for clarity:
1. A method of cutting an ingot, the method comprising:
gripping a sacrificial portion of a non-symmetrical
crystalline silicon ingot directly with a gripper of a cutting
apparatus,
wherein gripping the sacrificial portion comprises
gripping with the sacrificial portion positioned at an
uppermost position of the non-symmetrical crystalline
silicon ingot;
cutting the non-symmetrical crystalline silicon ingot to a
depth only partially into the non-symmetrical crystalline silicon
ingot to form a plurality of wafer portions projecting from the
sacrificial portion of the non-symmetrical crystalline silicon
ingot,
wherein at least a portion of the sacrificial portion
of the non-symmetrical crystalline silicon ingot is not cut,
and
wherein the cutting the non-symmetrical crystalline
silicon ingot comprises cutting upward with a plurality of
wires from a lowermost position of the non-symmetrical
crystalline silicon ingot to the depth toward but not to the
uppermost position of the non-symmetrical crystalline
silicon ingot; and
further cutting to separate the plurality of wafer portions
from the sacrificial portion of the non-symmetrical crystalline
silicon ingot, providing a plurality of discrete symmetrical
crystalline silicon wafers,
2
Appeal 2017-001370
Application 13/429,141
wherein the further cutting to separate the plurality
of wafer portions comprises cutting laterally with the
plurality of wires at the depth between the lowermost and
uppermost positions but not at the uppermost position of
the non-symmetrical crystalline silicon ingot and
catching the plurality of wafer portions in a wafer-
receiving catcher positioned below the lowermost position of the
ingot.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Wende
Tonegawa et al. (“Tonegawa”)
Bender
Bakshi et al. (“Bakshi”)
US 3,078,549
US 5,715,806
US 7,025,665 B2
US 2010/0126489 Al
Feb. 26, 1963
Feb. 10, 1998
Apr. 11,2006
May 27, 2010
The following rejection is before us for review:
Claims 1, 2, 7, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bakshi, Bender, Wende, and Tonegawa.
ISSUE
Did the Examiner err in rejecting claims 1, 2, 7, and 9 under 35 U.S.C.
§ 103(a) as being unpatentable over Bakshi, Bender, Wende, and Tonegawa?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
3
Appeal 2017-001370
Application 13/429,141
ANALYSIS
The rejection of claims 1, 2, 7, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Bakshi, Bender, Wende, and Tonegawa.
The Examiner takes the position that Bakshi discloses the claimed
“sacrificial portion” in plate 150B (Final Act. 2) and the claimed “cutting
upward” at, inter alia. Figure 6 of Bakshi {id.).
The Appellants argue that “Bakshi discloses cutting an ingot with
vertically aligned wires in a horizontal direction with vertically aligned
wires” (App. Br. 7) i.e., “ingot 150 cut from left to right with vertically
aligned wires,” {id. at 7-8) (citing Bakshi paragraphs 52-55 and Figure 6),
“whereas Appellants teach and claim first cutting along a vertical
direction 1” {id. at 8) (citing Appellants’ Figure 2B). See also Reply Br. 2.
As shown in Figure 6 of Bakshi, support table 220 moves toward
vertical wire web 140 from right to left as indicated by arrow 640. As can
be seen in Figure 6, work piece 150 is impelled into wire web 140 such that
the wires cut into the work piece 150 from left to right, i.e., toward plate
150B (also referred to as uncut portion 150B). In other words, wires 140 cut
into work piece 150 in a direction toward plate 150B (the “sacrificial
portion”), but not “upward” as required by claim 1.
The Examiner takes the position that “the ingot is an object that can
be rotated and as such upward and lowermost position limitations all depend
on how the ingot is mounted” and “under the broadest reasonable
interpretation, what is required is the sacrificial portion being at the
‘uppermost’ position and that the cutting wires are moved towards that
sacrificial portion” (Final Act. 3; see also id. at 9; Ans. 4-5).
4
Appeal 2017-001370
Application 13/429,141
The Examiner’s interpretation is inconsistent with the plain and
ordinary meaning of “cutting upward.” For example, Merriam-Webster
gives several definitions for “upward,” the first being “in a direction from
lower to higher.”3 Thus, under the broadest reasonable interpretation,
“cutting upward” means cutting from a lower position to a higher position,
i.e., away from the ground. We therefore agree with the Appellants that
Figure 6 of Bakshi does not disclose “cutting upward.”
Nevertheless, Bakshi discloses cutting upward in Figures 1 and 2. As
described in paragraph 6, “ingot 150 is pressed with a vertical motion (top to
bottom or bottom to top) against the horizontally moving wire web 140 in a
wire saw to slice wafers ...” A person of ordinary skill in the art would
have found the vertical arrangement of Figure 1 to be a predictable variation
of the horizontal arrangement of Figure 6. See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.”).
The Appellants further argue that Bakshi does not disclose “further
cutting using the same wires to cut within the ingot in a second orthogonal
direction” (App. Br. 7-8). See also Reply Br. 2.
In this regard, the Appellants are in agreement with the Examiner.
See, e.g., Final Act. 5 (“Bakshi et al does not teach using the same wire for
this cut.”); Ans. 6 (“the second cutting of Bakshi does not utilize the same
cutting wire as the first cutting in Bakshi”).
The Examiner finds that Bender in Figures 3 and 4 discloses using the
same wires to first cut an ingot to form wafers and then cut laterally to
3 Upward Definition, Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/upward (last visited Oct. 25, 2017).
5
Appeal 2017-001370
Application 13/429,141
separate the wafers (Final Act. 5-6). According to the Examiner, “it would
have been obvious to one of ordinary skill in the art to use the same cutting
wire to separate the plurality of wafer portions that partially cut the non-
symmetrical crystalline silicon ingot to form a plurality of wafer portions”
{id. at 6).
The Appellants argue:
Appellants understand Bender as disclosing the vertical cut all
the way through the ingot, so the lateral cut is not within the
ingot. From Figure 4, the vertical cut appears to project even
into cutting beam 102, leading to the lateral cut being
performed in the cutting beam 102. {See Bender, e.g., Figure 4,
shown below, and related text.)
(App. Br. 9-10). See also Reply Br. 2.
We are not persuaded of error in the Examiner’s rejection.
In effect, the Appellants address the teachings of the references
individually, failing to address the Examiner’s reasoning that one of ordinary
skill in the art would have been led by the combination of the references to
the claimed method.
The Appellants’ argument that Bender’s lateral cut is not within the
ingot does not address the Examiner’s position. The Examiner relied on
Bender as disclosing using the same wires to make a first cut and then a
second orthogonal cut at the depth of the first cut. Contrary to the
Appellants’ argument, the Examiner did not propose to modify Bakshi to cut
all the way through the ingot as disclosed in Bender. Cf. In re Keller,
642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
6
Appeal 2017-001370
Application 13/429,141
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”).
For the reasons set forth above, the rejection of independent claim 1
under 35 U.S.C. § 103(a) is affirmed. However, our reasoning departs
substantially from that of the Examiner. Accordingly, we denominate the
rejection as a new ground of rejection. The Appellants have not separately
argued the rejection of dependent claims 2, 7, and 9. Therefore, we sustain
the rejection of claims 2, 7, and 9 for the reasons discussed above.
DECISION
The decision of the Examiner to reject claims 1, 2, 7, and 9 is affirmed
but we denominate the affirmed rejection as a new ground of rejection.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
7
Appeal 2017-001370
Application 13/429,141
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; 41.50(b)
8