SEMICONDUCTOR COMPONENTS INDUSTRIES, LLCDownload PDFPatent Trials and Appeals BoardMay 25, 20212020004061 (P.T.A.B. May. 25, 2021) Copy Citation 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 2 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 Appeal 2020-004061 Application 15/988,718 3 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 Appeal 2020-004061 Application 15/988,718 4 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. Appeal 2020-004061 Application 15/988,718 5 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). Appeal 2020-004061 Application 15/988,718 6 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 Appeal 2020-004061 Application 15/988,718 7 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 Appeal 2020-004061 Application 15/988,718 8 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 Copy with citationCopy as parenthetical citation