Ex Parte Bibl et al

Patent Trial and Appeal Board

Mar 30, 2017

13749647 (P.T.A.B. Mar. 30, 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.
13/749,647 01/24/2013 Andreas Bibl 9299.P24356US7X3 3082
45217 7590
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
03/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS BIBL,
JOHN A. HIGGINSON, HSIN-HUA HU,
and HUNG-FAI STEPHEN LAW
Appeal 2014-008450
Application 13/749,647
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1, 2, 4, 6—12 and 14—24. Claims 3 and 5 are also pending but have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief dated January 27, 2014 (“App. Br.”).
Appeal 2014-008450
Application 13/749,647
1. A method comprising:
picking up an array of micro devices from a carrier substrate
with an electrostatic transfer head assembly supporting an array of
electrostatic transfer heads;
contacting a receiving substrate with the array of micro devices;
transferring thermal energy from the electrostatic transfer head
assembly to bond the array of micro devices to the receiving substrate;
and
releasing the array of micro devices onto the receiving
substrate.
App. Br. 43.
The claims on appeal stand rejected as follows:
(1) claims 1,2, 10-12, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Sugimoto1 in view of Haji et al.,2 Jang et al.,3 and Gibbel;4
(2) claims 4, 7, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang and Gibbel, and further in view of Welch;5
(3) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Sugimoto in
view of Haji, Jang, and Gibbel, and further in view of Kobrinsky et al.;6
(4) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Sugimoto in
view of Haji, Jang, Gibbel and Welch, and further in view of Suh;7
1 JP 05074873, dated March 26, 1993 (“Sugimoto”). We refer to the English
translation dated March 2014, which is of record in the instant Application.
2 US 7,033,842 B2, issued April 25, 2006 (“Haji”).
3 US 2012/0018494 Al, published January 26, 2012 (“Jang”).
4 US 6,558,109 B2, issued May 6, 2003 (“Gibbel”).
5 Warren C. Welch III & Khalil Najafi, Gold-Indium Transient Liquid Phase (TLP)
Wafer Bonding for MEMS Vacuum Packaging, Ctr. for Wireless Integrated
Microsys., (Univ. of Mich., Ann Arbor), Jan. 2008, at 806-09 (“Welch”).
6 US 2007/0284409 Al, published December 13, 2007 (“Kobrinsky”).
7 US 7,699,210 B2, issued April 20, 2010 (“Suh”).
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(5) claims 15—17 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, and Gibbel, and further in view of Okita;8
(6) claims 15 and 18 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, Gibbel, and Okita, and further in view of Welch;
(7) claims 1, 2, 10-12, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Sugimoto in view of Haji, Jang, Gibbel, and Furuya et al.;9
(8) claims 4, 7, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, Gibbel, and Furuya, and further in view of Welch;
(9) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Sugimoto in
view of Haji, Jang, Gibbel, and Furuya, and further in view of Kobrinsky;
(10) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Sugimoto in
view of Haji, Jang, Gibbel, Furuya, and Welch, and further in view of Suh;
(11) claims 15—17 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, Gibbel, and Furuya, and further in view of Okita;
(12) claims 15 and 18 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, Gibbel, Furuya, and Okita, and further in view of
Welch;
(13) claims 19-21 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, Furuya, and Okita, and further in view of Suh; and
(14) claims 22 and 23 under 35 U.S.C. § 103(a) as unpatentable over
Sugimoto in view of Haji, Jang, Furuya, and Suh, and further in view of Okita.
The Appellants group the claims on appeal as follows:
Claim 1 stands or falls on its own. Claims 1 and 19 stand or
fall together. Claims 2 and 20 stand or fall together. Claims 10 and
8 US 2009/0127315 Al, published May 21, 2009 (“Okita”).
9 US 2012/0134065 Al, published May 31, 2012 (“Furuya”).
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21 stand or fall together. Claim 18 stands or falls on its own. Claim
23 stands or falls on its own.
App. Br. 7.
Claims 1,2, 10, 18, and 23 are addressed separately below.
B. DISCUSSION
1. Claim 1
a. Rejection (1)
Sugimoto discloses a thermocompression bonding method. The Examiner
finds the method comprises the steps of (1) picking up a micro device (i.e., chip
11) from a carrier substrate using a head assembly; (2) contacting a receiving
substrate with the micro device; (3) transferring thermal energy from the head
assembly to bond the micro device to the receiving substrate; and (4) releasing the
micro device onto the receiving substrate. Final 2.10 The Examiner finds
Sugimoto’s head assembly is a thermocompression bonding head equipped with a
suction means, not an electrostatic transfer head assembly as recited in claim 1.
Final 2—3.
The Examiner finds “Gibbel teaches that electrostatic chucks can be used in
place of vacuum chucks.” Final 3 (citing Gibbel, col. 5,11. 62—64).* 11 The
Examiner concludes that one of ordinary skill in the art “would have found it
obvious to substitute the vacuum chucking mechanism [of Sugimoto] for the
electrostatic chucking mechanism [of Gibbel]” because vacuum chucks and
electrostatic chucks “were art recognized equivalents at the time the invention was
made.” Final 3^4.
10 Final Office Action dated August 27, 2013.
11 “Chucks other than a vacuum chuck, such as electrostatic chucks, or magnetic
chucks, can be used to hold the separated wafer.” Gibbel, col. 5,11. 62—64.
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Relying on MPEP § 2143 (B), the Appellants argue that the Examiner has
not found that “the results of the substitution would have been predictable.” App.
Br. 11. In particular, the Appellants argue:
[T]he chuck disclosed by Gibbel is applicable to wafer level work
pieces. As such, the chuck of Gibbel would not require the precision
required for proper alignment while picking up or bonding an array of
micro devices. With only disclosures directed at the wafer level, one
of ordinary skill in the art would not understand that predictable
results would occur when picking up micro devices with the
electrostatic chuck disclosed in Gibbel.
App. Br. 14.
In response, the Examiner explains that “since the primary reference,
Sugimoto, is picking up chips using a vacuum and it has been established vacuum
and electrostatic means are functional equivalents one would have reasonable
expectations that electrostatic means could also pick up micro devices.” Ans. 4.12
Significantly, the Examiner’s response does not address the Appellants’
argument. We recognize Gibbel teaches that vacuum chucks and electrostatic
chucks are known alternatives for picking up wafers. However, the Examiner does
not show that Gibbel teaches that vacuum chucks and electrostatic chucks are
known equivalents for picking up chips, which are smaller than wafers and, in the
Appellants’ words, require “precision . . . for proper alignment.” App. Br. 14. The
Examiner does not rely on the remaining prior art of record to cure that deficiency.
Therefore, rejections (1) — (6) are not sustained.
b. Rejection (7)
As discussed above with respect to rejection (1), the Examiner finds the head
assembly disclosed in Sugimoto is a thermocompression bonding head equipped
12 Examiner’s Answer dated May 21, 2014.
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with a suction means, not an electrostatic transfer head assembly as recited in
claim 1. See Final 6 (regarding claim 1, Sugimoto’s teachings are noted above).
The Examiner finds “Furuya teaches using an electrostatic chuck (78) to
selectively pick up and place chips (60) and can be used in place of a vacuum pick
and place machine.” Final 6 (citing Furuya Figs. 13D-14C; Furuya ]Hf 63—65, 80-
82). The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to replace the vacuum chuck of Sugimoto with the electrostatic
chuck of Furuya because vacuum chucks and electrostatic chucks “were art
recognized equivalents at the time the invention was made.” Final 3^4.
The Appellants argue that
Furuya cannot be used to show that combining an electrostatic
transfer head assembly with a bonding method that involves
transferring thermal energy is within the ordinary skill in the art at the
time of the invention. Specifically, Furuya recognizes that there are
problems associated with transferring thermal energy to form the
bonds and chooses to avoid the problems altogether. As disclosed by
Furuya, when surface activation bonding is used, “thermal distortion
after bonding is not occurred (sic).” [Furuya 171.] Clearly then,
since Furuya explicitly avoids using a bonding process that occurs at
an elevated temperature, one would not understand Furuya as
disclosing that a combination that includes the transfer of thermal
energy to make the bonds was within the ordinary skill in the art at the
time of the invention.
App. Br. 15—16.
In response, the Examiner finds that “while Furuya may avoid heat, Furuya
never states that an ESC [electrostatic chuck] can’t be used successfully with heat.”
Ans. 5. The Appellants recognize as much. See Reply Br. 7 (“Furuya does not
explicitly state that electrostatic pick-up and transfer of micro devices is impossible
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with heat.”).13 To the extent that one of ordinary skill in the art would have
understood that thermal bonding has certain disadvantages, “a given course of
action often has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006); see also Ans. 5 (“one of ordinary skill in the art
would know that there are numerous types of bonding methods out there each with
their own various advantages and disadvantages and that thermal distortion may be
a disadvantage of one method but it may be offset by other advantages making it
more cost effective”).
In this case, the Appellants have failed to show that replacing the vacuum
chuck in Sugimoto’s assembly with the electrostatic chuck disclosed in Furuya
would have rendered the assembly inoperable for its intended purpose. Contra In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (prior art taught away from
proposed modification where modification would have rendered prior art apparatus
inoperable for its intended purpose). Thus, a preponderance of the evidence
supports the Examiner’s conclusion of obviousness.
The § 103(a) rejection of claim 1 based on Sugimoto in view of Haji, Jang,
Gibbel, and Furuya is sustained.
2. Claim 2
Claim 2 depends from claim 1 and recites, in relevant part, that “each micro
device has a maximum width of 1 — 100 pm.” App. Br. 43.
There is no dispute on this record that Furuya teaches a chip having a width
within the range recited in claim 2. See App. Br. 26 (“Appellants understand the
Examiner as arguing that since Furuya is concerned with chips of 300x300 pm or
13 Reply Brief dated July 21, 2014.
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less, that bonding micro devices between 1-100 pm is within the ordinary skill in
the art at the time of the invention.”). Nonetheless, the Appellants argue that the
Examiner fails to consider the type of bonding used in Furuya, i.e., “a bonding
process that occurs at room temperature.” App. Br. 27. The Appellants argue that
“transfer of heat is avoided by Furuva in order to prevent thermal deformation of
the micro devices.” App. Br. 28. Thus, according to the Appellants, Furuya does
not provide support for “bonding micro devices with a maximum width of 1-100
pm to a receiving substrate with a bonding process that includes the transfer of
thermal energy.'” App. Br. 27 (emphasis added).
For the reasons discussed above,14 any preference in Furuya for surface
activation bonding at room temperature would not have led one of ordinary skill in
the art away from using a chip having a width as recited in claim 2 in Sugimoto’s
modified method. Therefore, the § 103(a) rejection of claim 2 based on Sugimoto
in view of Haji, Jang, Gibbel, and Furuya is sustained.
3. Claim 10
Claim 10 depends from claim 2 and recites “wherein each electrostatic
transfer head in the array of electrostatic transfer heads picks up a single micro
device.” App. Br. 45 (emphasis added).
The Examiner finds “Jang and Haji both teach one component per bonding
head, fig. 6A and 11A-B, respectively.” Final 5. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to “incorporate the
concept of one component per bonding head, as taught by Jang and Haji, in order
[1] to isolate thermal transfer, [2] to enable easy inspection, or [3] to prevent
workpieces from moving between heads.” Final 5.
14 Section entitled “b. Rejection (7).”
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The Appellants argue that Jang does not disclose a pick and place tool. App.
Br. 29. However, the Examiner relies on Sugimoto, not Jang, to show a pick and
place tool.15 See Final 2; Ans. 8. Moreover, the Examiner finds, and the
Appellants do not dispute, that “Haji teaches that multiple chips (6) can be picked
up and placed simultaneously on to substrate (16) using . . . mounting head (33)
which has an array of nozzles (33a).” Final 3 (citing Haji Figs. 10A—13B).
The Appellants also argue that “each of the motivations for combining the
references submitted by the Examiner fail to have any rational underpinning.”
App. Br. 30; see also App. Br. 31—33. However, the Appellants do not address the
Examiner’s finding that one of ordinary skill in the art would have modified the
head assembly of Sugimoto with the concept of one component per bonding head,
as taught by Haji, “in order to isolate thermal transfer.” Final 5; see also App. Br.
31 (discussing Jang).
In the Examiner’s Answer, the Examiner also clarifies the reasons for
combining the references with respect to Jang. Ans. 9. In response, the Appellants
summarily argue that “the Examiner is picking and choosing disparate features or
elements from different pieces of prior art and simply throwing them into a basket
to meet the limitations of claims 10 and 21.”16 Reply Br. 10. The Appellants,
15 See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (test for obviousness “is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art”).
16 The Appellants argue that the Examiner’s proposed combination “modifies the
mesa structure 38 in FIG. 6A of Jans to presumably remove the vacuum pipes 31,
reduce a contact surface to a maximum width of 1 — 100 pm, and additionally
become electrostatic transfer heads.” Reply Br. 9—10. To the contrary, the
Examiner is proposing to modify the head assembly of Sugimoto to support an
array of electrostatic transfer heads wherein each transfer head in the array picks
up a single micro device. See Final 3,5, 6—7.
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however, do not direct us to any error in the reasoning provided in the Examiner’s
Answer.
For the reasons set forth above, the § 103(a) rejection of claim 10 based on
Sugimoto in view of Haji, Jang, Gibbel, and Furuya is sustained.
4. Claim 18
The Examiner finds “Welch teaches using TFP [Transient Fiquid Phase]
bonding to bond electrical components in which the lower melting metal, In, is
melted.” Final 7. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art “to use TFP to bond the components of the prior art in
order to bond at lower temperatures without voids.” Final 7; see also Final 11
(“one would use the bonding material of Welch for the reasons noted in the
rejection of claim 4”). According to the Examiner:
In doing so it would have been obvious to one of ordinary skill in the
art at the time of the invention to keep the temperature above the
lower melting point material, In, but lower than the high melting point
material, Au, in order to perform the bonding method of Welch.
Final 11; see also Ans. 11 (“common sense would dictate that you keep the
bonding head as hot as the temperature at which the bonding method requires”).
The Appellants recognize that
[o]nce it has been articulated that the bonding method of Welch is
desired, and that the materials used for the bonding layers are those
used in Welch, it is a simple step to then conclude that the temperature
of the transfer heads disclosed by Okita should be reduced to the
temperature disclosed in Welch.
App. Br. 35. However, the Appellants argue that “the Examiner is only able to pull
the motivation to use the bonding process of Welch from Appellants’ own
disclosure.” App. Br. 36.
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Significantly, the Appellants do not show that the motivation provided by
the Examiner, i.e., “to bond at lower temperatures without voids” (Final 7), is from
the Appellants’ disclosure.17 See App. Br. 36 (arguing that the Examiner’s
motivation “is provided by the new revelatory way that Appellants looked at the
problem of misalignment”). Therefore, the Appellants’ argument is not persuasive
of reversible error.
In the Reply Brief, the Appellants argue for the first time on appeal that
“ Welch ramps the temperature profile rather than maintain the temperature at the
claimed temperature during the claimed sequence.” Reply Br. 12. The Appellants’
argument is not responsive to an argument raised in the Examiner’s Answer, and
the Appellants do not show good cause why their argument could not have been
raised in the Appeal Brief. Therefore, we decline to consider the Appellant’s new
argument on appeal. 37 C.F.R. § 41.41(b)(2) (2016).
For the reasons set forth above, the § 103(a) rejection of claim 18 based on
the combination of Sugimoto, Haji, Jang, Gibbel, Furuya, Okita, and Welch is
sustained.
5. Claim 23
Claim 23 depends from claim 22 and recites:
wherein the substrate supporting the array of electrostatic transfer
heads is maintained above the ambient liquidus temperature of the
receiving substrate bonding layers and below the ambient liquidus
temperature of the micro device bonding layers.
App. Br. 48.
17 See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some
motivation or suggestion to combine the references is provided by the prior art
taken as a whole, the law does not require that the references be combined for the
reasons contemplated by the inventor”).
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The Appellants argue that “none of the references utilized by the Examiner
to reject claim 23 disclose that the substrate supporting the array of electrostatic
transfer heads is maintained above the ambient liquidus temperature of the
receiving substrate bonding layer and below the ambient liquidus temperature of
the micro device bonding layers.” App. Br. 39.
In response, the Examiner states that “the appellant once again individually
attacks Okita and ignores the teachings of Suh.”18 Ans. 12. However, the
Examiner does not make any factual findings with respect to Suh in the rejection of
claim 23. See Final 16—17. For that reason, the § 103(a) rejection of claim 23
based on the combination of Sugimoto, Haji, Jang, Furuya, Suh, and Okita is not
sustained. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner
“bears the initial burden ... of presenting a prima facie case of unpatentability”).
C. DECISION
The Examiner’s decision to reject claims 1, 2, 10-12, and 14 under 35
U.S.C. § 103(a) as unpatentable over Sugimoto in view of Haji, Jang, and Gibbel is
reversed.
The Examiner’s decision to reject claims 4, 7, and 9 under 35 U.S.C. §
103(a) as unpatentable over Sugimoto in view of Haji, Jang and Gibbel, and further
in view of Welch is reversed.
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, and Gibbel, and further in view
of Kobrinsky is reversed.
18 In contrast to the § 103(a) rejection of claim 18, the Examiner omits Welch and
rejects claim 23 under § 103(a) based on the combination of Sugimoto, Haji, Jang,
Furuya, Suh, and Okita. See App. Br. 40.
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The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, Gibbel and Welch, and further
in view of Suh is reversed.
The Examiner’s decision to reject claims 15—17 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, and Gibbel, and further in view
of Okita is reversed.
The Examiner’s decision to reject claims 15 and 18 under 35 U.S.C. §
103(a) as unpatentable over Sugimoto in view of Haji, Jang, Gibbel, and Okita, and
further in view of Welch is reversed.
The Examiner’s decision to reject claims 1, 2, 10-12, and 14 under 35
U.S.C. § 103(a) as unpatentable over Sugimoto in view of Haji, Jang, Gibbel, and
Furuya is affirmed.
The Examiner’s decision to reject claims 4, 7, and 9 under 35 U.S.C. §
103(a) as unpatentable over Sugimoto in view of Haji, Jang, Gibbel, and Furuya,
and further in view of Welch is affirmed.
The Examiner’s decision to reject claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, Gibbel, and Furuya, and further
in view of Kobrinsky is affirmed.
The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, Gibbel, Furuya, and Welch, and
further in view of Suh is affirmed.
The Examiner’s decision to reject claims 15—17 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, Gibbel, and Furuya, and further
in view of Okita is affirmed.
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The Examiner’s decision to reject claims 15 and 18 under 35 U.S.C. §
103(a) as unpatentable over Sugimoto in view of Haji, Jang, Gibbel, Furuya, and
Okita, and further in view of Welch is affirmed.
The Examiner’s decision to reject claims 19—21 and 24 under 35 U.S.C. §
103(a) as unpatentable over Sugimoto in view of Haji, Jang, Furuya, and Okita,
and further in view of Suh is affirmed.
The Examiner’s decision to reject claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, Furuya, and Suh, and further in
view of Okita is affirmed.
The Examiner’s decision to reject claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Sugimoto in view of Haji, Jang, Furuya, and Suh, and further in
view of Okita is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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