2021000411 (P.T.A.B. Aug. 2, 2021)

SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals BoardAug 2, 2021

2021000411 (P.T.A.B. Aug. 2, 2021)

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. 15/988,262 05/24/2018 Michael J. SEDDON ONS02890US 3609 132194 7590 08/02/2021 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 08/02/2021 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 2021–000411 Application 15/988,262 Technology Center 2800 BEFORE BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and SHELDON M. McGEE, Administrative Patent Judges. Opinion for the Board filed by FRANKLIN, Administrative Patent Judge. Dissenting opinion filed by MCGEE, 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 10–14.2 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(a). Appellant identifies the real party in interest as Semiconductor Components Industries, LLC. Appeal Br. 2. 2 The status of the claims are set forth on page 5 of the Appeal Brief. Appeal 2021–000411 Application 15/988,262 2 CLAIMED SUBJECT MATTER Claim 10 is illustrative of Appellant’s subject matter on appeal and is set forth below: 10. A method of singulating a plurality of die from a semiconductor substrate, the method comprising: irradiating a die street with a laser beam at a focal point within the semiconductor substrate at one or more spaced apart locations beneath the surface of the die street to form 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 the semiconductor substrate; mounting the semiconductor substrate to a support tape and to a spindle; exposing the semiconductor substrate to sonic energy using a single sonic energy source applied through the spindle; and singulating the plurality of die at the damage layer using the sonic energy. Appeal Br. 20 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Murata US 2005/0170616 Al Aug. 4, 2005 Obata US 2015/0162222 Al June 11, 2015 Sharma US 2016/0096155 Al Apr. 7, 2016 Appeal 2021–000411 Application 15/988,262 3 REJECTION Claims 10–14 are rejected under 35 U.S.C. § 103 as being obvious over Obata in view of Murata and Sharma. OPINION Appellant does not make separate arguments in support of patentability of any particular claim or claim grouping. Accordingly, the claims subject to the rejection will stand or fall with claim 10. See 37 C.F.R. § 41.37(c)(iv). We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. 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 considering the argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejection essentially for the reasons stated by the Examiner in the record, with the following emphasis. We refer to the Examiner’s position as set forth on pages 4–5 of the Answer. Therein, the Examiner finds that Obata teaches a wafer processing apparatus comprising a water tank for submerging the wafer placed on the placement table in cleaning water (30), and an ultrasonic supply means (14). Obata, Fig. 1, ¶ 27. The Examiner finds that supply means (14) supplies ultrasonic waves to the wafer (20) submerged in the cleaning water. Obata, ¶ 27. Ans. 4. Appeal 2021–000411 Application 15/988,262 4 The Examiner finds that by the ultrasonic waves supplied by the ultrasonic supply means, the wafer is divided along the planned dividing lines and is turned into small pieces to generate a plurality of chips and the generated chips are cleaned. Obata, ¶ 7. Ans. 4. The Examiner states that Obata does not teach any structural description of the ultrasonic supply unit (14) such that Obata fails to explicitly teach the claim limitation of mounting the semiconductor substrate to a spindle and exposing the semiconductor substrate to sonic energy using a single sonic energy source applied through the spindle. Ans. 4–5. The Examiner relies upon Murata for teaching wafers including sapphire substrates, silicon carbide substrates, and the like. Final Act. 7. The Examiner relies upon Sharma for teaching a vibrator that is used to generate a vibration wave (ultrasound or sonic wave, ¶ 18 of Sharma) with a variable frequency that can agitate and facilitate the circulation of processing fluids for cleaning residues (¶ 36 of Sharma), thereby enhancing the uniformity and efficiency of the resulting semiconductor device features, wherein the vibrator may be a piezoelectric vibrator or other similar vibrators (¶ 46 of Sharma). The Examiner finds that Figure 2 of Sharma teaches such a vibrator comprising a spindle (210). Sharma, Figure 2, ¶15, and ¶ 19. Ans. 5. The Examiner states that thus both Obata and Sharma teach using an ultrasonic or sonic vibrator for cleaning purposes, wherein Sharma explicitly teaches different types of vibrators, including one with a spindle. Ans. 5. The Examiner concludes that the combination of references suggests the implementation of Sharma’s vibrator with a spindle in the Appeal 2021–000411 Application 15/988,262 5 ultrasonic supply unit (14) of Obata according to the teaching of Sharma, since it has been held that choosing from a finite number of identified, predictable solutions (using the vibrator with spindle or without spindle for supplying ultrasonic energy to a wafer), with a reasonable expectation of success, is obvious. Ans. 5. Beginning on page 10 of the Appeal Brief, Appellant argues (1) that the Examiner incorrectly understands Sharma, and (2) that the Examiner’s obvious to try rationale is deficient, for the reasons presented on pages 9–14 of the Appeal Brief. With specific regard to Appellant’s argument that the Examiner incorrectly understands Sharma, Appellant submits that Sharma provides no solution to the problem of singulating a plurality of die or that its sonic energy could be used to singulate die. Appeal Br. 12. However, as stated by the Examiner on page 4 of the Answer, the test for obviousness is what the combined teachings would have suggested, and the Examiner explains that Obata is relied upon for teaching ultrasonic supply means (14) for dividing a wafer, and that Sharma is relied upon for teaching a type of vibrator having a spindle for supplying ultrasonic energy. Ans. 4–5. The Examiner therefore states on page 6 of the Answer that Appellant’s argument in this regard is attacking the references individually where the rejection is based upon the combination of references, and therefore unpersuasive. We agree. The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art; one cannot show non- obviousness by attacking references individually where the rejections are based on combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Appeal 2021–000411 Application 15/988,262 6 Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). With regard to Appellant’s arguments pertaining to “obvious to try” rationale, we view the Examiner’s characterization of the rationale as being “obvious to try”, as harmless error. While we appreciate the dissenting position that the MPEP mandates that the Examiner articulate there had been a recognized problem or need in the art when relying upon this rationale, we believe that the Examiner de facto relied upon and/or articulated that the design need and/or market pressure is for any appropriate ultrasonic agitation. The Examiner’s position that it has been held that choosing from a finite number of identified, predictable solutions (using the vibrator with spindle or without spindle for supplying ultrasonic energy to a wafer), with a reasonable expectation of success, is obvious (e.g., Ans. 5)3, may also reasonably be viewed as the predictable use of known prior art elements or steps performing the same functions they have been known to perform. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In any event, Appellant’s arguments are not persuasive of reversible error in the Examiner’s determination because they fail to account for “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). The claimed subject matter appears to be no more than the predictable use of known prior art elements or steps performing the same functions they have been known to 3 In other words, “where a skilled artisan merely pursues ‘known options’ from a ‘finite number of identified, predictable solutions,’ obviousness under § 103 arises.” In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)). Appeal 2021–000411 Application 15/988,262 7 perform and the Supreme Court has stated such a situation is normally obvious; that is, the combination of familiar elements/steps is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, Appellant has not shown reversible error in the Examiner’s obviousness determination. On pages 2–5 of the Reply Brief, Appellant reiterates and elaborates upon certain arguments presented in the Appeal Brief. For the reasons discussed above, we are unpersuaded by such arguments. In view of the above, we determine that no reversible error has been shown in the Examiner’s obviousness determination, and affirm the Examiner’s rejection. CONCLUSION We affirm the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10–14 103 Murata, Obata, Sharma 10–14 Overall Outcome 10–14 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) (2018). Appeal 2021–000411 Application 15/988,262 8 AFFIRMED Appeal 2021–000411 Application 15/988,262 9 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. SEDDON Appeal 2021–000411 Application 15/988,262 Technology Center 2800 Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge, dissenting. I respectfully dissent from my colleagues’ affirmance of the Examiner’s obviousness rejection. I would reverse. The Examiner finds that Obata and Murata fail to disclose or suggest the claim limitations requiring “mounting the semiconductor substrate to a support tape and to a spindle” and “exposing the semiconductor substrate to sonic energy using a single sonic energy source applied through the spindle.” Final Act. 8. For these limitations, the Examiner turns to the disclosure of Sharma. Id. Significantly, in my view, the Examiner relies solely on an obvious-to-try rationale for combining the teachings of Sharma with that of Obata and Murata. Id. at 8–9. The Examiner, however, fails to first identify a recognized problem or need in the art before concluding that Appeal 2021–000411 Application 15/988,262 10 Sharma’s spindled vibrator would have been “obvious to try.” Final Act., generally. As Appellant points out (Appeal Br. 10–14; Reply Br. 3–5), the absence of such a fact finding violates the requirements mandated by the U.S. Supreme Court and the MPEP. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 421 (2007) ( When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. ) (emphases added); MPEP §2143 I.E. (outlining that “to reject a claim based on [obvious to try] rationale, Office personnel must . . . articulate . . . a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem”) (emphasis added). Thus, as I see it, the Examiner’s rejection lacks the requisite fact finding to establish a prima facie case of obviousness and cannot be sustained. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection.”) For these reasons, I dissent, with respect.