Ex Parte Cullen et al

Patent Trial and Appeal Board

Sep 11, 2013

11349566 (P.T.A.B. Sep. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/349,566 02/08/2006 John Melvyn Cullen 2868-021-1A 8498
27820 7590 09/11/2013
WITHROW & TERRANOVA, P.L.L.C.
100 REGENCY FOREST DRIVE
SUITE 160
CARY, NC 27518
EXAMINER
LUKE, DANIEL M
ART UNIT PAPER NUMBER
2813
MAIL DATE DELIVERY MODE
09/11/2013 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 JOHN MELVYN CULLEN and SUZANNE COMBE
____________________

Appeal 2011-004544
Application 11/349,566
Technology Center 2800
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 103(a) as
obvious (see Ans. 3-7 for the statement of the rejections). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons presented in the Examiner’s Answer, we AFFIRM.
We add the following for emphasis only.
Appeal 2011-004544
Application 11/349,566

2
Appellants’ arguments are directed to the rejection of claim 1 as
obvious over Okada1 in view of Imai2 and Felton3.4 Because Appellants do
not argue any claim apart from the others, we select claim 1 as
representative for resolving the issue on appeal. Claim 1, with emphasis
added to direct attention to the limitation at issue, reads:
1. A method of bonding a semiconductor wafer to a
support substrate comprising the steps of:
providing a semiconductor wafer;
protecting the semiconductor wafer during processing by
coating at least part of one face of the semiconductor wafer
with a water soluble coating layer;
providing a double sided adhesive tape, at least one side
of the adhesive tape comprising a thermal release adhesive;
adhering the double sided adhesive tape to the water
soluble coating layer by means of said thermal release adhesive;
adhering a reverse side of the adhesive tape to the
support substrate;
heating the semiconductor wafer to separate the water
soluble coating layer from the adhesive tape, thereby releasing
the semiconductor wafer from the support substrate;
mounting the semiconductor wafer to a film frame after
releasing the semiconductor wafer from the support substrate;
and

1 Okada et al., US 6,930,023 B2, patented Aug. 16, 2005.
2 Imai et al., US 2004/0256618 A1, pub. Dec. 23, 2004.
3 Felton et al., US 2002/0094662 A1, pub. Jul. 18, 2002.
4 The Examiner adds additional prior art references to reject various
dependent claims, but the teachings of those references are not at issue in
this appeal and, therefore, we need not discuss those references.
Appeal 2011-004544
Application 11/349,566

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rinsing the semiconductor wafer to remove the water
soluble coating layer after the mounting of the semiconductor
wafer to the film frame.
(Claims App’x at Br. 10.)
The Examiner acknowledges that Okada fails to teach a step of
coating at least a part of one face of the wafer with a water soluble layer, and
turns to Imai as evidence to support the conclusion that it would have been
obvious to one of ordinary skill in the art provide such a coating in the
process of Okada (Ans. 4-5).
Appellants do not in their Brief dispute the Examiner’s findings and
conclusions with respect to Okada, Felton, and the combination of the
reference teachings, nor do they dispute that Imai teaches coating a
semiconductor wafer (Br. 5-7). Instead, Appellants take issue with the
Examiner’s finding that the presence of Imai’s water-soluble layer would
inherently protect the underlying semiconductor layer during processing
(compare Br. 5-7 with Ans. 4-5).5
The sole issue on appeal is: Have Appellants identified a reversible
error in the Examiner’s finding that the water soluble layer disclosed in Imai

5 Appellants make additional arguments in the Reply Brief; however, there is
no showing of good cause why those arguments were not made in the
Principal Brief. We will not address arguments made for the first time in the
Reply Brief without good cause. See Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (Informative) (“the reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”); Ex parte Nakashima, 93
USPQ2d 1834 (BPAI 2010) (absent a showing of good cause explaining
why the argument could not have been presented in the Principal Brief, a
new argument in the Reply Brief will not be considered).

Appeal 2011-004544
Application 11/349,566

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would inherently protect the underlying semiconductor layer during
processing?
The affirmative processing step of the second clause of the claim is
“coating at least part of one face of the semiconductor wafer with a water
soluble coating layer.” As we state above, there is no dispute that Imai
teaches such a coating step. The language “protecting the semiconductor
wafer during processing” is merely the function of the coating. Moreover,
the word “processing” is not specific to any specific processing steps.
Given that Imai’s coating covers the semiconductor, it was reasonable
for the Examiner to find that the coating inherently would function in the
same manner as Appellants’ water-soluble coating, i.e., it would protect the
semiconductor during processing. The Examiner provides specific technical
reasoning in support of the finding of inherency (Ans. 8). The Examiner’s
reasonable determination of inherency shifts the burden to Appellants to
provide evidence that coating as suggested by Imai would not, in fact, result
in protecting the semiconductor wafer during processing. See In re Best,
562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d
210 (CCPA 1971). Appellants have not provided the type of factual
evidence required to meet this burden.
A preponderance of the evidence supports the Examiner’s finding of
inherency. Appellants have not identified a reversible error in that finding.
DECISION
The Examiner’s decision is affirmed.

Appeal 2011-004544
Application 11/349,566

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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)(1).
AFFIRMED

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