Ex Parte Corbett

Board of Patent Appeals and Interferences

May 8, 2006

10137586 (B.P.A.I. May. 8, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIM J. CORBETT
____________

Appeal No. 2006-1230
Application No. 10/137,586
____________

ON BRIEF
____________

Before THOMAS, LEVY, and NAPPI, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-20, which are all of the claims pending in
this application.

We AFFIRM.
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Application No. 10/137,586

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BACKGROUND
The appellant's invention relates to laser marking
techniques (specification, page 1). Specifically, while the
laser is actively marking, a substance is introduced into the
marking work area that interacts with the laser beam. In another
aspect of the invention, the surface of the chip is at least
partially covered with a laser reactive substance prior to being
contacted by the laser beam (id.).
Claim 1 is representative of the invention, and is
reproduced as follows:
1. A semiconductor device including a surface with a
marking thereon, the marking comprising energy-reacted material
on the surface without being recessed in the surface.

The prior art reference of record relied upon by the
examiner in rejecting the appealed claims are:
Saito JP 04-116955A April 17, 1992
(Japanese Patent Document)

Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Saito.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (mailed June 3, 2005)
for the examiner's complete reasoning in support of the
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Application No. 10/137,586

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rejection, and to the brief (filed March 18, 2005) and reply
brief (filed August 2, 2005) for the appellant's arguments
thereagainst.
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of anticipation relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant’s arguments set forth in the briefs along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with claim 1.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). The examiner's position can be
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found on pages 4 and 5 of the answer. Appellants' position
(brief, page 6) is that with respect to the subject matter
depicted in figures 3(a) and 3(b) of Saito, it is not clear from
the portion of the disclosure whether or not Saito expressly or
inherently describes that the material from which characters 2
and polarity mark 3 are formed is energy-reacted. It is asserted
(reply brief, page 2) that prior to the examiner’s answer, the
examiner relied upon the abstract and drawings of Saito. In the
examiner’s answer, the examiner relied upon an English language
translation of Saito. Appellant argues (id.) that the examiner’s
reliance in the answer, on an English language translation of
Saito and not just the abstract and drawings of Saito,
constitutes a new ground of rejection. Appellant adds (reply
brief, page 3) that “[i]n any event, it is respectfully submitted
that several of the claims that remain pending in the above-
referenced application recite subject matter that is not
anticipated by the disclosure of Saito.” Appellant then proceeds
to argue claims 8, 14 and 19, but presents no additional
arguments regarding claim 1.
At the outset, we note that in the final rejection, the
examiner rejects claims 1-20 as being unpatentable over Saito.
The examiner does not state that only the abstract and drawings
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are being relied upon. The record indicates that a copy of the
translation of the entire document was sent to appellant in the
communication dated July 29, 2005. From the mailing date of the
translation, it would appear that the translation would have
crossed in the mail with the reply brief. To preserve the
integrity of the due process to which appellant is entitled, we
designate our affirmance, infra, as a New Ground of Rejection in
order to allow appellant the opportunity to reopen prosecution,
should appellant desire to do so. The following remarks rely on
this translation.
Turning to Saito, we find that the semiconductor device is
embodied by resin-molding a semiconductor chip (page 2). It is
disclosed (page 3) that in the prior art, laser marking caused a
channel with a depression shape formed on the resin surface. In
the alternate embodiment of figures 3a and 3b, the reference
discloses (pages 5 and 6) that the photosensitive resin film 7,
which includes a colorable material, is coated on the surface of
the molded resin component 1, where a character or mark is
exposed and formed in a flat fashion by means of ultraviolet
irradiation via a mask.
From this disclosure, we find that the photosensitive resin
7 is coated on the molded resin component 1, and the character or
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mark is then formed in a flat fashion by means of ultraviolet
irradiation. Because Saito overcomes the problem of laser
marking causing a depression in the resin surface, by coating a
photosensitive resin film 7 on the molded resin component 1 prior
to the ultraviolet irradiation, we find that Saito meets the
limitations of claim 1.
We are not persuaded by appellant’s assertion (brief, pages
6 and 7) that it cannot be understood whether Saito describes the
material from which the characters 2 and polarity mark 3 are
formed as being energy-reacted. From the disclosure of Saito
that the resin film 7 is photosensitive and that the character or
polarity mark is formed by ultraviolet irradiation, we find that
the reference is clear that this limitation is met by Saito.
From all of the above, the rejection of claim 1 under 35 U.S.C.
§ 102(b) is affirmed.
We turn next to claim 2. From the disclosure of Saito that
the film 7 includes a colorable material, we agree with the
examiner (answer, page 6) that Saito discloses the energy-
reactive material to include a pigment. Accordingly, the
rejection of claim 2 under 35 U.S.C. § 102(b) is affirmed.
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We turn next to claim 3. We affirm the rejection of claim 3
because the material of resin film 7 that is masked is unreacted
by the ultraviolet irradiation.
We turn next to claim 4. Appellant asserts (brief, page 8)
that Saito does not disclose that the color of the reacted
material is different from the color of the unreacted material.
From the disclosure of Saito (page 6) that the resin film 7 can
be colorable material, and the disclosure of figures 1, 3a and 3b
of the characters being of different color than the unreacted
portions of film 7, we agree with the examiner that Saito meets
the limitations of claim 4. The rejection of claim 4 under 35
U.S.C. § 102(b) is affirmed.
We turn next to claim 5. Appellant asserts (brief, pages 8
and 9) that Saito does not teach that the regions of the surface
beneath and laterally adjacent the markings are substantially
free of decomposition and damage. From the disclosure of Saito
of using a mask for the ultraviolet irradiation (page 6) and the
disclosure (page 3) that the invention solves the problem of
laser marking causing a channel with a depression in the resin
surface, we find that Saito meets the language of claim 5. The
rejection of claim 5 under 35 U.S.C. § 102(b) is affirmed.
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We turn next to claim 6. Appellant asserts (brief, pages 9
and 10) that Saito does not teach that the characters could be
bonded or fused to the surface of the molded resin member 1.
From our review of Saito, we agree with the examiner for the
reasons set forth in the answer (page 8) that the laser or
ultraviolet irradiation would fuse the characters to the surface
of the molded resin member 1, and that if the characters were not
fused to the surface of the molded resin member, they would fall
off. Accordingly, the rejection of claim 6 under 35 U.S.C.
§ 102(b) is affirmed.
We turn next to claim 7. As this claim has not been argued
by appellant, it falls with claim 1 from which it depends. The
rejection of claim 7 under 35 U.S.C. § 102(b) is affirmed.
We turn next to claim 8. Appellant asserts (brief, page 10)
that Saito does not teach that the surface on which the markings
are located comprises a surface of a semiconductor die. (See
also reply brief, page 3). From our review of Saito, we note
that the claim does not recite that the markings are directly
located on the surface of the die. As broadly claimed, we agree
with the examiner (answer, page 9) that:
Saito teaches an encapsulant resin material 1
covering at least a portion of a semiconductor die,
since a semiconductor die is inherently located
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within encapsulant resin 1 (see page 2, first
paragraph of the translation). Since Saito teaches
marking on a surface of a resin 1, and resin 1 is
located on a surface of the semiconductor die, then
Saito teaches marking on a surface of a semiconductor
die, as claimed.

Accordingly, the rejection of claim 8 under 35 U.S.C. § 102(b) is
affirmed.
We turn next to independent claim 9. We will sustain the
rejection of claim 9 for the reasons set forth by the examiner
(answer, pages 4, 5 and 8) and for the reasons set forth, supra,
with respect to claim 1. the rejection of claim 9 under 35
U.S.C. § 102(b) is affirmed.
We turn next to claim 10. Appellant asserts (brief, page
12) that Saito does not teach marking on a surface of a die or a
surface from which a die is formed. From our review of the
record, we agree with the examiner, for the reasons set forth in
the answer (page 9) that “[s]ince Saito teaches marking on a
surface of a resin 1, and resin 1 is located on a surface of the
semiconductor die, then Saito teaches marking on a surface of a
semiconductor die, as claimed.” Accordingly, the rejection of
claim 10 under 35 U.S.C. § 102(b) is affirmed.
We turn next to claim 11. We affirm the rejection of claim
11 for the same reasons as we affirmed the rejection of claim 2.
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We turn next to claim 12. We affirm the rejection of claim
12 for the same reasons as we affirmed the rejection of claim 3.
We turn next to the rejection of claim 13. We affirm the
rejection of claim 13 for the same reasons as we affirmed the
rejection of claim 4.
We turn next to claim 14. Appellant asserts (brief, page
13) that Saito does not teach that the unreacted energy-reactive
material is not bonded or fused to the surface. Appellant adds
(reply brief, page 3) that “the disclosure of Saito is limited to
a packaged semiconductor device 1 with a resin film 7 including
both reacted regions 2, 3 and unreacted regions secured to a
surface thereof.” From the disclosure (page 6) of Saito we find
the resin film 7 is coated on the surface of the molded resin
component 1. From the disclosure that the resin is coated on the
surface, we find no disclosure that the coated resin that is not
energy reacted, is fused or bonded to the surface. Thus, we find
that the masked areas are not fused or bonded to the surface
since they are not exposed to the laser or ultraviolet
irradiation. Accordingly, we find that Saito meets the language
of claim 14. The rejection of claim 14 under 35 U.S.C. § 102(b)
is affirmed.
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We turn next to claim 15. As claim 15 has not been
separately argued by appellant, claim 15 falls with claim 9, from
which it depends. The rejection of claim 15 under 35 U.S.C.
§ 102(b) is affirmed.
We turn next to claim 16. We affirm the rejection of claim
16 for the same reasons as we affirmed the rejection of claim 11.
We turn next to claim 17. We affirm the rejection of
claim 17 for the same reasons that we affirmed the rejection of
claim 12.
We turn next to claim 18. We affirm the rejection of claim
18 for the same reasons as we affirmed the rejection of claim 13.
We turn next to claim 19. We affirm the rejection of claim
19 for the same reasons as we affirmed the rejection of claim 14.
We turn next to claim 20. We affirm the rejection of claim
20 for the same reasons as we affirmed the rejection of claim 5.

SUMMARY
We have affirmed the rejection of claims 1-20 under
35 U.S.C. § 102(b) as being anticipated by Saito for the reasons
cogently set forth by the examiner in the answer, as amplified by
our comments and findings. However, because we found, supra,
that appellant was not sent a copy of the full translation of the
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Saito reference until a few days before the reply brief was
filed, we designate our affirmance as a New Ground of Rejection
under 37 CFR § 41.50(b).

This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004). 37 CFR
§ 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 CFR § 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. . . .

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CONCLUSION
To summarize, the decision of the examiner to reject claims
1-20 under 35 U.S.C. § 102(b) is affirmed. No time period for
taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED; 37 CFR § 41.50(b)

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
Appeal No. 2006-1230
Application No. 10/137,586

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