Ex Parte DiepDownload PDFPatent Trial and Appeal BoardMay 9, 201714513570 (P.T.A.B. May. 9, 2017) Copy Citation 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. 14/513,570 10/14/2014 Buu Q. Diep RTN-793ARE(10-1103-USREI) 1096 33164 7590 05/11/2017 RAYTHEON COMPANY C/O DALY, CROWLEY, MOFFORD & DURKEE, LLP 354A TURNPIKE STREET SUITE 301A CANTON, MA 02021 EXAMINER TILL, TERRENCE R ART UNIT PAPER NUMBER 3991 NOTIFICATION DATE DELIVERY MODE 05/11/2017 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): docketing@dc-m.com amk@dc-m.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BUU Q. DIEP Appeal 2017-002633 Application 14/513,5701 Patent 8,393,526 B2 Technology Center 3900 Before ALLEN R MacDONALD, KEN B. BARRETT, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 8—14, which are all of the claims pending in the present application. The present application seeks to reissue U.S. Patent No. 8,393,526 B2 (“the ’526 patent”), which issued on March 12, 2013, from Application No. 13/273,881 (“the ’881 application”), filed on October 14, 2011. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application relates to a method “to seal wafer level packaged electronic devices using solder.” ’526 Patent at 1:13—16, Abstract. 1 Appellant states the real party in interest is Raytheon Co. App. Br. 2. Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 Rejection Reissue claims 8—14 stand rejected under 35 U.S.C. § 251 as being an improper recapture of subject matter previously surrendered during prosecution. Final Act. 2. The Original, Issued, and Reissue Claims Because the rejection is based on whether Appellant’s reissue claims recapture subject matter surrendered during prosecution, we must consider the claims before amendment (original claim 1), after amendment (issued claim 1), and in reissue (reissue claim 8). Original claim 1 as filed in the ’881 application on October 14, 2011, is reproduced below: 1. A method for packaging electronic devices, comprising: melting solder for a solder jet; depositing the melted solder from the solder jet in a pattern on a substrate of a first component of an electronic device, the pattern comprising a plurality of individual dots of melted solder; aligning a second component of the electronic device with the pattern deposited on the first component of the electronic device; re-melting the solder deposited in the pattern on the first component of the electronic device; and while the solder is re-melting, compressing the first and second components of the electronic device. Appellant submitted an amendment to claim 1 on September 20, 2012. Appellant concedes this amendment was made “to distinguish over the art.” Reply Br. 4—5. Claim 1 as amended by Appellant is reproduced below with additions underlined and deletions in double brackets: 2 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 1. A method for wafer-level packaging of electronic devices, comprising: melting solder for a solder jet; depositing the melted solder from the solder jet in a pattern on a substrate of a first component of [[an]] a wafer level package electronic device, the pattern comprising a plurality of individual dots of melted solder; aligning a second component of the electronic device with the pattern deposited on the first component of the electronic device; re-melting the solder deposited in the pattern on the first component of the electronic device; [[and]] while the solder is re-melting, compressing the first and second components of the electronic device wherein reflow of the solder deposited in the pattern and bonding of the first and second components occur simultaneously; and depositing additional melted solder from the solder jet to form columns of solder dots at three or more points on the substrate of the first component for providing a vacuum conductance gap between the first component of the electronic device and the second component of the electronic device. An Examiner’s amendment mailed on November 7, 2012, further amended claim 1. Again, Appellant concedes this amendment was made “to distinguish over the art.” Reply Br. 4—5. Claim 1 as amended by the Examiner’s amendment is reproduced below with additional text underlined and deleted text in double brackets. The Examiner’s amendment also moved the “depositing additional melted solder” step (in italics below) from the end of the claim to the middle. 1. A method for wafer_[[-]]level packaging of electronic devices, comprising: melting solder for a solder jet; depositing the melted solder from the solder jet in a pattern on a substrate of a first component of a wafer level package 3 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 electronic device, the pattern comprising a plurality of individual dots of melted solder; depositing additional melted solder from the solder jet to form columns of solder dots at three or more points on the substrate of the first component for providing a vacuum conductance gap between the first component of the electronic device and the second component of the electronic device; aligning a second component of the electronic device with the pattern deposited on the first component of the electronic device such that the second component is elevated from the first component and a portion of the pattern by the columns of solder formed with the additional melted solder; re-melting the solder deposited in the pattern and in the columns on the first component of the electronic device; and while the solder is re-melting, compressing the first component of the electronic device and the second component[s]] of the electronic device wherein reflow of the solder deposited in the columns and in the pattern and bonding of the first and second components occur simultaneously to join the second component to the portion of the pattern. The ’526 patent issued on March 12, 2013, with issued claim 1 as set forth in the Examiner’s amendment discussed above. The only independent claim now sought on reissue is reissue claim 8, which is reproduced below. According to Appellant, “[a]ll the subject matter relating to additional solder and columns of solder [from issued claim 1] has been removed from Reissue claim 8.” Reply Br. 5. 8. A method for wafer-level packaging of electronic devices, comprising: depositing individual solder drops on a first substrate in a pattern to form drop gaps between the solder drops; aligning a second substrate in relation to the first substrate and the pattern of solder drops, wherein the first and second substrates are substantially parallel such that there is a substrate gap between the first and second substrates; 4 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 creating a vacuum in the substrate gap; and heating the solder drops which are at least partially unmelted until reflow commences, wherein compression of the first and second substrates reduces the substrate gap such that spaces provided by the drop gaps enable pressure escape from the substrate gap during the compression until the solder drops melt into a continuous band that forms a hermetic seal in a region defined by the band of solder and the first and second substrates. ISSUE Whether reissue claim 8 is directed to an “overlooked aspect” such that the recapture rule does not bar reissue? ANALYSIS Under the reissue statute, “[wjhenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid ... by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall. . . reissue the patent” if the patentee satisfies various conditions. 35 U.S.C. § 251 (pre-AIA). This statute “balances the purpose of providing the patentee with an opportunity to correct errors of inadequate claim scope, with the public interest in finality and certainty of patent rights.” In re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997). One important restriction balancing these concerns is the recapture rule. “The recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution in order to overcome prior art and obtain a valid patent.” In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). “The 5 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 rationale underlying the rule is that the cancellation or amendment of the original claim in order to overcome prior art is a deliberate action that necessarily excludes the inadvertence or mistake contemplated by the statute’s error requirement.” Id. “To determine whether the applicants’ reissue claims violate the recapture rule, we apply a three-step recapture rule analysis.” Youman, 679 F.3d at 1343. As explained by the Federal Circuit, (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed . . . and hence avoid the recapture rule. N. Am. Container, Inc. v. PlastipakPackaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (spacing added). Appellant does not specifically address the steps in the recapture analysis. Instead, Appellant argues, “Reissue claim 8 is directed to an ‘overlooked aspect’ of the invention” and therefore “35 USC 251 and the Recapture doctrine do not present an obstacle to allowance.” App. Br. 8. According to Appellant, “the subject matter added to achieve allowance of the ‘526 patent has been removed [in the reissue claims] in favor of a completely separate invention.” Id. at 11. We are not persuaded that reissue claim 8 is addressed to “overlooked” aspects. The Federal Circuit has said that “overlooked aspects by definition were never claimed.” Youman, 679 F.3d at 1347; Ans. 140. Yet all of the “overlooked” limitations identified by Appellant already exist in substantially similar forms in the issued claims, as shown in the table 6 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 below. Reply Br. 7 (emphasis modified); App. Br. 5—6, 10-11. Such limitations therefore by definition were not “overlooked.” Reissue Claim S Issued & Original Claims “depositing individual solder drops on a first substrate in a pattern to form drop gaps between the solder drops’ ’’ “depositing the melted solder ... in a pattern comprising a plurality of gaps between at least a portion of the plurality of individual dots of melted solder” (issued and original dependent claim 4) “creating a vacuum in the substrate gap’ ’ “providing a vacuum conductance gap between the first component. . . and the second component’ ’’ (issued claim 1, as added by amendment on Sept. 2, 2012) “heating the solder drops which are at least partially unmelted until reflow commences’ ’’ “re-melting the solder” (issued and original claim 1) “reflow of the solder” (issued claim 1, as added by amendment on Sept. 2, 2012) compressing the two substrates (i.e., components) such that “spaces provided by the drop gaps enable pressure escape from the substrate gap during the compression until the solder drops melt into a continuous band that forms a hermetic sear “hermetically sealing a gap between the first component. . . and the second component” (issued dependent claim 5, and original dependent claim 6) Appellant also analogizes its application to the case of B.E. Meyers & Co. v. United States, 47 Fed. Cl. 200 (2000). That case involved an original claim with a pulsing circuit, an amendment to overcome prior art by specifying how the pulsing circuit must operate, and a reissue claim that deleted the pulsing circuit limitation entirely and instead focused on a lens system. B.E. Meyers, 47 Fed. Cl. 206-07. However, Appellant’s assertion 7 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 that “Meyers has not been overturned and must be applied” is misplaced. App. Br. 8. First, B.E. Meyers is from the Court of Federal Claims and thus is not binding. Appellant has not cited any instance of the Supreme Court, Federal Circuit, or any other binding authority citing or approving B.E. Meyers. Second, B.E. Meyers never used the phrase “overlooked aspect.” Instead, the court applied the normal three-step recapture analysis. B.E. Meyers, 47 Fed. Cl. at 206-07. The court appears to have found that under step two of the recapture analysis, the broadening was not related to the surrender. See id. at 207 (“The subject matter protected in the new independent reissue claims dealt only with the lens system; it had nothing to do with any type of pulsing circuitry [i.e., what was surrendered during prosecution].”); see also MPEP § 1412.02(I)(B)(1) (once citing B.E. Meyers as a “see also” in a section on step two). Thus, B.E. Meyers does not support Appellant’s “overlooked aspect” argument. Third, given the Federal Circuit’s intervening case law since B.E. Meyers was decided, it is not at all clear that this court or even the Court of Federal Claims, let alone the Federal Circuit or Supreme Court, would reach the same result today. Finally, even in the best possible light, the court in B.E. Meyers considered the very different technologies of a “pulsing circuitry” and a “lens system” to be separate, unrelated inventions (47 Fed. Cl. at 207), whereas here we agree with the Examiner that all of the claims (original, issued, and reissue) relate to “different aspects of the same invention” of packaging electronic devices by soldering two components together. Ans. Tflf 50, 47—48, 35. Thus, the holding in B.E. Meyers is neither binding nor persuasive here. 8 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 Appellant’s analogy to two examples in the MPEP are unpersuasive for the same reasons. E.g., App. Br. 3—5; MPEP § 1412.02(I)(B)(1). As discussed above, all of the claims (original, issued, and reissue) relate to the same basic technology of packaging electronic devices by soldering two components together. We also do not agree the new limitations in reissue claim 8 would be mutually exclusive of the amended limitations in issued claim 1 (e.g., columns of solder). Appellant further argues that original claim 1 and reissue claim 8 are “patentably distinguishable” and therefore necessarily a “separate invention” not subject to the recapture rule. App. Br. 11; Reply Br. 5—7. However, Appellant’s test (whether a reissue claim would have been patentable absent the surrender) on its face ignores the surrender and is not the standard used to determine recapture. Instead, consistent with Federal Circuit precedent, we must apply the three-step analysis to determine if the recapture rule is triggered. Here, the first step is met because the claims are broader. Specifically, Appellant concedes that “[djuring prosecution, Patent Owner added ‘additional melted solder’ to ‘form columns’ where ‘the second component is elevated from the first component.. .by the columns of solder’ to distinguish over the art.” Reply Br. 4—5. Appellant further concedes that “[a]ll the subject matter relating to additional solder and columns of solder [in issued claim 1] has been removed from Reissue claim 8.” Id. at 5; App. Br. 11. Thus, for step 1, reissue claim 8 is broader than original claim 1 in that limitations (e.g., columns of solder) have been entirely eliminated. Ans. 1110-12, 24. 9 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 The second step asks whether the broader aspects of the reissue claims relate to subject matter surrendered. “A reissue claim that deletes a limitation or element from the patent claims is broader with respect to the modified limitation.” In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011) (quotation omitted). Here, as discussed above, Appellant concedes that limitations added to overcome the prior art were entirely eliminated from reissue claim 8. Reply Br. 4—5; App. Br. 11. Therefore, the second step is met. Ans. 13—14. In the third step, we must determine whether the claims were “materially narrowed.” Material narrowing must be considered “on a limitation-by-limitation basis.” Youman, 679 F.3d at 1345. The inquiry in the third step is whether any new limitation in the reissue claim “materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.” Id. “Properly applied, the material narrowing must relate to the surrendered subject matter to prevent the recapture rule from applying.” Id. at 1347; Mostafazadeh, 643 F.3d at 1359 (“the narrowing must relate to the subject matter surrendered during the original prosecution”). “If the narrowing is unrelated to the surrendered subject matter, it is irrelevant for the purposes of the analysis even if it renders the reissue claim as a whole intermediate in scope relative to the patented and original claims.” Youman, 679 F.3d at 1347-48. Here, none of the additional limitations identified by Appellant in reissue claim 8 (e.g., the drop gaps, vacuum, reflow, and hermetic seal discussed above) relate to the surrendered subject matter (e.g., columns of solder). To the contrary, Appellant concedes that “[a]ll the subject matter relating to additional solder 10 Appeal 2017-002633 Application 14/513,570 Patent 8,393,526 B2 and columns of solder has been removed from Reissue claim 8.” Reply Br. 5; App. Br. 11. Therefore, there is no “material narrowing” related to the surrendered subject matter. Ans. 117. The recapture rule therefore prohibits Appellant’s reissue claim 8. Accordingly, we sustain the Examiner’s rejection of reissue claim 8, and reissue claims 9—14, which Appellant does not argue separately. See 37 C.F.R. §41.37(c)(l)(iv). DECISION For the reasons above, we affirm the Examiner’s decision rejecting reissue claims 8—14. 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. § 41.50(f). AFFIRMED 11 Copy with citationCopy as parenthetical citation