Ex Parte TAKAMOTO et al

Patent Trial and Appeal Board

Sep 24, 2018

13170669 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/170,669 06/28/2011
65565 7590 09/26/2018
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
FIRST NAMED INVENTOR
Naohide TAKAMOTO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql25389 4250
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAO HIDE T AKAMOTO, GOJI SHIGA, and FUMITERU ASAI
Appeal 2017-011690
Application 13/170,669
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, and 9. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 We refer to the Specification ("Spec.") filed June 28, 2011; Final Office
Action ("Final Act.") dated November 1, 2016; Appellants' Appeal Brief
("App. Br.") filed June 5, 2017; Examiner's Answer ("Ans.") dated July 28,
2017, and Appellants' Reply Brief ("Reply Br.") filed September 20, 2017.
2 Appellants identify Nitto Denko Corporation as the real party in interest.
App. Br. 2.
Appeal 2017-011690
Application 13/170,669
BACKGROUND
The subject matter on appeal relates to a semiconductor back-surface
film intended for use in connection with flip chip manufacture. Spec. ,r 1.
Claim I-the sole independent claim on appeal-reads:
1. A dicing tape-integrated film for semiconductor
back surface, which consists of a dicing tape, a film for flip chip
type semiconductor back surface laminated on the dicing tape,
and a release liner on a surface of the film for flip chip type
semiconductor back surface that is opposite the dicing tape;
wherein the dicing tape comprises a base material and a
pressure-sensitive adhesive layer laminated on the base
material, and the film for flip chip type semiconductor back
surface is directly laminated on the pressure-sensitive adhesive
layer;
wherein, the film for flip chip type semiconductor back
surface is uncured and the surface of the film at the interface
with the pressure-sensitive adhesive layer has a surface
roughness (Ra) within a range of from 50 nm to 3 µm; and
wherein, the film for flip chip type semiconductor back
surface contains a coloring agent.
App. Br. 18 (Claims Appendix).
REJECTIONS
I. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Watanabe3 and Saiki. 4
II. Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Watanabe, Saiki, and Takamoto. 5
3 US 2010/0099240 Al, published April 22, 2010 ("Watanabe").
4 US 2009/0053518 Al, published February 26, 2009 ("Saiki").
5 US 2008/0213943 Al, published September 4, 2008 ("Takamoto").
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Application 13/170,669
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 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 the Examiner's rejections for the reasons expressed in the
Final Office Action and Answer. We add the following primarily for
emphasis.
Rejection I
With regard to Rejection I, Appellants argue the claims as a group,
directing the arguments to recitations found in claim 1. See App. Br. 5-16.
We select claim 1 as representative of the rejected claims. Claim 2 stands or
falls with claim 1.
Relevant to Appellants' arguments on appeal, the Examiner finds that
Watanabe discloses, with reference to Watanabe's Figure 1, a semiconductor
back-surface tape-integrated film which includes a release film 2, a die
bonding film 3, and dicing tape formed by an adhesive layer 4, adhesive
layer Sa, and substrate layer Sb. Final Act. 2; Ans. 3--4. The Examiner
further finds that Sakai teaches providing pigments or dyes in semiconductor
protective films to enhance recognizability. Final Act. 3--4.
Appellants argue that the phrase "consists of' in claim 1 limits the
claim to three layers, and for that reason precludes Watanabe's film structure
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Appeal 2017-011690
Application 13/170,669
which Appellants contend includes four layers. App. Br. 11-12. We
disagree. Although the claim calls for a tape-integrated film which consists
of a dicing tape, a film, and a release liner, Appellants do not point to any
recitation in the claim that limits each of those elements to a single layer. To
the contrary, claim 1 expressly recites that the dicing tape component
comprises both a base material and an adhesive layer. As noted, the
Examiner views Watanabe's adhesive layer 4, adhesive layer Sa, and
substrate layer Sb collectively as the recited dicing tape. Ans. 3--4.
Appellants' argument that these layers in Watanabe contribute different
properties and have different dimensions (App. Br. 12-13) does not
persuade us that these layers cannot be viewed collectively as the recited
dicing tape. Appellants do not identify any structural distinction between
Watanabe's multi-layered dicing tape and the multi-layered dicing tape
called for in claim 1. 6
Appellants' further argue that there would have been no reason to
provide a colorant to Watanabe's die bonding film because that film would
not be visible. App. Br. 15. The Examiner responds that, although
6 Appellants separately argue that claim 1 is non-obvious over an alternative
embodiment depicted in Watanabe's Figure 2 and described in Watanabe's
paragraphs 192-196. See App. Br. 13-15; Reply Br. 5-7. We do not read
the Examiner's rejection of claim 1 as relying on Watanabe's alternative
embodiment. Although the Examiner mentions Watanabe's Figure 2 (Final
Act. 2), that mention is made in regard to Watanabe's disclosure at
paragraph 158 which does not relate to Watanabe's Figure 2 embodiment.
We consider the Examiner's mention of Watanabe's Figure 2 as harmless
error. In any event, Appellants' argument regarding Watanabe's alternative
Figure 2 embodiment does not persuade us of error in the Examiner's
findings and obviousness determination made in reliance on Watanabe's
Figure 1 embodiment.
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Application 13/170,669
Watanabe's die bonding film might not be visible in a final semiconductor
chip product, the die bonding film nonetheless would be visible at various
times during the chip manufacturing process. Ans. 7. Appellants contend,
without detailed explanation, that even if Watanabe's die bonding film were
exposed during manufacturing, "there would be no surface markings to be
seen." Reply Br. 8. Appellants' argument does not persuasively dispute the
Examiner's finding that one skilled in the art would have had a reason to
color Watanabe's die bonding film to make it recognizable when it is visible
during the chip manufacturing process.
For the foregoing reasons, we are not persuaded of error in the
Examiner's rejection of claim 1. Rejection I is sustained. 7
Rejection II
Appellants do not separately argue against the Examiner's rejection of
claim 9. Accordingly, Rejection II also is sustained.
DECISION
The Examiner's decision rejecting claims 1, 2, and 9 is affirmed.
7 Appellants argue for the first time in the Reply Brief that Watanabe does
not disclose a pressure-sensitive adhesive layer, and that there is insufficient
basis to support the Examiner's determination that it would have been
obvious to provide Watanabe's die bonding film with a roughened surface.
Reply Br. 4--7. Appellants have not shown good cause explaining why these
arguments were not raised in the Appeal Brief. Therefore, these arguments
will not be considered. See 37 C.F.R. § 41.41(b)(2).
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Appeal 2017-011690
Application 13/170,669
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
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