14581233 - (D) (P.T.A.B. Aug. 3, 2020)

Texas Instruments Incorporated

Patent Trials and Appeals BoardAug 3, 2020

14581233 - (D) (P.T.A.B. Aug. 3, 2020)

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. 14/581,233 12/23/2014 Lee Han Meng@ Eugene Lee TI-75291 8180 23494 7590 08/03/2020 TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, MS 3999 DALLAS, TX 75265 EXAMINER NGUYEN, DILINH P ART UNIT PAPER NUMBER 2894 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): uspto@ti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEE HAN MENG@ EUGENE LEE, SHU HUI OOI, ANIS FAUZI ABDUL AZIZ, and WEI FEN, SUEANN LIM Appeal 2019-005487 Application 14/581,233 Technology Center 2800 Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and N. WHITNEY WILSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–13. See Appeal Br. 11–26. We have 1 This Decision includes citations to the following documents: Specification filed December 23, 2014 (“Spec.”); Non-Final Office Action mailed June 1, 2018 (“Non-Final Act.”); Appeal Brief filed October 30, 2018 (“Appeal Br.”); and Examiner’s Answer mailed February 26, 2019 (“Ans.”). 2 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 Texas Instruments Incorporated. Appeal Br. 3. Appeal 2019-005487 Application 14/581,233 2 jurisdiction under 35 U.S.C. § 6(b). We affirm in part and enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Appellant states the invention relates to methods of making Flat No- Lead Packages with plated severed lead surfaces exposed on lateral side surfaces thereof. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter (Appeal Br., Claims Appendix 28): 1. A method of making Flat No-Lead Packages with plated lead surfaces exposed on lateral sidewall surfaces of said Flat No-Lead Packages comprising: providing a plurality of Flat No-Lead Packages having severed unplated lead surfaces exposed on lateral faces thereof and having plated lead surfaces exposed on bottom faces thereof; and batch electroplating only the severed unplated lead surfaces of the plurality of Flat No-Lead Packages. Claim 12 recites a similar method of making Flat No-Lead Packages. Id. at 31. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ayotte, Jr. et al. hereinafter “Ayotte” US 8,453,843 B1 June 4, 2013 Huening US 8,642,461 B2 February 4, 2014 REJECTIONS 1. The Examiner rejected claims 1 and 12 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Non-Final Act. 4–5. Appeal 2019-005487 Application 14/581,233 3 2. The Examiner rejected claims 1–5 and 11–13 under 35 U.S.C. § 102(a)(2) as anticipated by Huening. Non-Final Act. 5–8. 3. The Examiner rejected claims 6–10 under 35 U.S.C. § 103 as unpatentable over Huening and Ayotte. Non-Final Act. 8–9. OPINION Rejection 1 The Examiner’s Rejection The Examiner found claims 1 and 12 fail to comply with the written description requirement because the drawings and original disclosure fail to describe batch electroplating “only” the severed unplated lead surfaces of the plurality of Flat No-Lead Packages. Non-Final Act. 4. The Examiner found this to be new matter relative to the original disclosure. Id. at 2–4. The Examiner explained that when the severed unplated lead surfaces 182 are plated, the plating layer 198 plates a portion of the sidewall of plating layer 186 in addition to the severed unplated lead surfaces. Id. at 4, citing Figs. 14, 18; Ans. 3–10, citing Figs. 9, 13, 14, 18 (annotated). Appellant’s Contentions Appellant argues the Specification supports claims 1 and 12, because the Specification describes plating all exposed surface portions of the leadframe 170, except the severed end faces 182, and then discloses a subsequent process step where another electroplating bath is used to plate severed unplated lead surfaces 182. Appeal Br. 11–12, citing Spec. ¶¶ 2, 29, 33, 34, 36, 38–42; Figs. 9, 9A, 10, 12–14, 18–20. Appellant contends Appeal 2019-005487 Application 14/581,233 4 Figures 14 and 18 do not show plating layer 198 over plating layer 186 or above leads 174 and die pad 172. Id. at 12–13. Issue The dispositive issue with respect to this rejection is: Did the Examiner err in finding claims 1 and 12 fail to comply with the written description requirement by reciting that “only” the severed unplated lead surfaces of the plurality of Flat No-Lead Packages are electroplated as a result of the methods recited therein? Discussion We are not persuaded by Appellant’s arguments. In order to comply with the written description requirement, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). Compliance with the written description requirement is a question of fact. Id. at 1562–63. In this case, the Specification describes a method of plating severed face portions 182 of Flat-No-Lead Packages, which are created by saw cutting lateral side faces 181. Spec. ¶¶ 33, 34, 36–42; Figs. 5, 6, 8, 9A, 10– 21. The Specification describes that all exposed surface portions of the leadframe 170 except the lead severed end faces 182 are plated first (surface portions 186). Spec. ¶ 34. As explained by the Examiner, the figures show that when the side surfaces 181 are saw cut, a side surface of surface portion 186 is also exposed, and is then electroplated when the severed end faces 182 are Appeal 2019-005487 Application 14/581,233 5 plated. Ans. 4–10, annotated Figs. 9, 13, 14, 18. Although Appellant points to a number of paragraphs in the Specification for support that “only” the severed end faces 182 are plated as discussed above, none of these paragraphs describe procedures that would prevent the sides of surface portions 186 exposed during saw cutting from being plated when the severed end faces 182 are plated with electroplated layer 198. See Spec. ¶¶ 2, 29, 33, 34, 36, 38–42; Figs. 9, 9A, 10, 12–14, 18–20. Thus, although the Specification describes plating severed end face portions 182, the Specification does not reasonably convey to one of ordinary skill in the art that Appellant was in possession of embodiments where only the severed end face portions 182 were plated. As a result, we affirm the Examiner’s rejection of claims 1 and 12. The Examiner did not indicate claims 2–11 and 13 were subject to this rejection. Non-Final Act. 4–5; Ans. 3. However, claims 2–11 and 13 depend from claims 1 and 12 and as a result, incorporate all of the limitations recited in independent claims 1 and 12. Therefore, we enter a new ground of rejection for claims 2–11 and 13 as failing to comply with the written description requirement. Rejection 2 We limit our discussion to claims 1 and 12, which is sufficient to dispose of the issues related to this rejection. The Examiner’s Rejection In rejecting claims 1 and 12 as anticipated by Huening, the Examiner expressly stated: Appeal 2019-005487 Application 14/581,233 6 For the purpose of examination, the examiner assumes the above limitation of “batch electroplating only the severed unplated lead surfaces of the plurality of Flat No-Lead Packages” (as recited in lines 7-8 [of claim 1]) is “batch electroplating the severed unplated lead surfaces of the plurality of Flat No-Lead Packages”. . . . For the purpose of examination, the examiner assumes the above limitation of “passing an electrical current through the conductor strip to electroplate only the unplated severed lead surfaces” (as recited in lines 14-15 [of claim 12]) is “passing an electrical current through the conductor strip to electroplate the unplated severed lead surfaces”. Non-Final Act. 4–5; see Ans. 11–12. As a result of this claim interpretation, the Examiner found Huening discloses a method of making Flat No-Lead Packages with plated lead surfaces exposed on lateral sidewall surfaces including providing a plurality of Flat No-Lead Packages having severed, unplated lead surfaces exposed on lateral faces, and batch electroplating the severed unplated lead surfaces. Non-Final Act. 5, citing Huening, col. 1, ll. 19–22, col. 4, ll. 9–12; Figs. 1–3, 5, 6. Appellant’s contentions Appellant contends Huening does not teach batch electroplating only the severed unplated lead surfaces of the plurality of Flat No-Lead packages exposed on the lateral faces thereof, but rather discloses electroplating the bottom land portions in addition to the side land portions. Appeal Br. 14. Appeal 2019-005487 Application 14/581,233 7 Issue Did the Examiner err in finding that Huening anticipates claims 1 and 12, which recite that “only” a severed unplated lead surfaces of a plurality of Flat No-Lead Packages are electroplated? Discussion We are persuaded by Appellant’s arguments. Initially, we observe that it was not proper for the Examiner to disregard the recitations in claims 1 and 12 of batch electroplating “only” the severed unplated lead surfaces for the purpose of examination as exemplified by the portions of the Non-Final Action reproduced above. Although we agree with the Examiner that these recitations in claims 1 and 12 do not have sufficient written description support, and as a result are new matter, the Examiner is still required to take such recitations into account for the purposes of applying prior art. MPEP § 2163.06 (I) (“The examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant.”). In terms of Huening, as pointed out by Appellant, Huening expressly discloses that both the side land portions 166 and bottom land portions 164 are electroplated as a result of the method disclosed therein. Huening, col. 5, ll. 21–32, 42–53; col. 6, ll. 44–54; col. 8, ll. 34–36; col. 9, 11. 13–18; col. 10, ll. 49–53; Figs. 4A, 4B. Thus, although the Examiner correctly observes that the Flat No-Lead Packages disclosed in Huening initially contain side land portions (severed unplated lead surfaces) that are not coated or plated Appeal 2019-005487 Application 14/581,233 8 (Huening, col. 4, ll. 4–12), Huening does not expressly disclose a method where only such side land portions are plated as recited in claims 1 and 12.3 Accordingly, we reverse the Examiner’s rejection of claims 1–5 and 11–13 as anticipated by Huening. Rejection 3 In rejecting claims 6–10, which depend indirectly from claim 1, as obvious over Huening and Ayotte, the Examiner relies on the same reasoning with respect to Huening as discussed above. Non-Final Act. 8. Ayotte is cited for arranging a plurality of devices in a grid, and thus does not remedy the deficiencies discussed above with respect to Huening. Id. Accordingly, we reverse the Examiner’s rejection of claims 6–10 for similar reasons as discussed above for claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 12 112 Written Description 1, 12 2–11, 13 1–5, 11– 13 102 Huening 1–5, 11– 13 6–10 103 Huening, Ayotte 6–10 3 If prosecution continues, and Appellant sufficiently amends or overcomes the written description issues with respect to claims 1 and 12, the Examiner may wish to consider how Huening, alone, or in combination with other prior art may render the claims, as properly interpreted, unpatentable. Appeal 2019-005487 Application 14/581,233 9 Overall Outcome 1, 12 2–11, 13 2–11, 13 TIME PERIOD FOR RESPONSE 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 Appellant, 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. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED IN PART; 37 C.F.R. § 41.50(b)