Ex Parte Elkins et al

Board of Patent Appeals and Interferences

Apr 13, 2009

09751975 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES ELKINS and DENNIS PERRY
____________

Appeal 2009-0124
Application 09/751,975
Technology Center 3700
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Decided:1 April 13, 2009
____________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0124
Application 09/751,975

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STATEMENT OF THE CASE
Charles Elkins et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 18, 20, and 21. Claims 1-17 and 19
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6 (2002).

THE INVENTION
The Appellants’ invention is drawn towards a method and apparatus
for separating circuit boards from a multiple pre-scored board array.
Specification 1, ll. 4-8 and fig. 3.
Claims 18 and 20 are representative of the claimed invention and read
as follows:
18. A method of separating individual circuit boards from a
multiple board array with pre-scored planes comprising:
aligning one of the pre-scored planes with a splitting
element,
affixing a removable shield element to an individual
circuit board portion of the multiple board array;
loading the removable shield element to reduce board
flex; and
inducing torque on the multiple board array such that the
multiple board array is forced onto the splitting element
and breaks along the pre-scored plane.
20. An apparatus for separating individual circuit board from
a multiple board array with pre-scored planes and a
plurality of electrical components comprising:
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at least one splitting element positioned along one of the
pre-scored planes; and

at least one torque inducing element using surface
loading to mechanically force the multiple board array
onto said at least one splitting element and thereby
breaking the multiple board array along the pre-scored
plane said at least one torque inducing element forcing
the multiple board array without loading the plurality of
electrical components,

wherein said torque inducing element applies said surface
loading to the multiple board array by way of a shield
element attached to the individual circuit board such that
the plurality of electrical components remain undamaged;
and

a transport element for automatically aligning one of the
pre-scored planes with said at least one splitting element.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Boyd US 3,562,058 Feb. 9, 1971

The Appellants seek review of the Examiner’s rejection of claims 18,
20, and 21 under 35 U.S.C. § 102(b) as anticipated by Boyd.

THE ISSUE
Have the Appellants demonstrated that the Examiner erred in
determining that Boyd teaches (1) aligning the splitting element with one of
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Application 09/751,975
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the pre-scored planes and (2) a transport element for aligning the splitting
element with one of the pre-scored planes?

SUMMARY OF DECISION
We REVERSE.

FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Boyd discloses a method and device for separating a semiconductor
wafer having a large number of circuits formed thereon into a
plurality of discrete sections. Boyd, col. 1, ll. 29-33.
2. Boyd further discloses forming orthogonal scribe marks (pre-scored
planes) on the wafer, placing the scribed wafer 6 on a first plastic film
2, covering the wafer with a high temperature material film 3 and a
second plastic film 4, which is sealed to the first plastic film 2,
drawing a vacuum between plastic films 2 and 4 to form an
encapsulated wafer, placing the encapsulated wafer onto mat 32
(splitting element), passing a roller 10 (torque inducing element) over
the encapsulated wafer, and breaking the wafer along the scribe
marks. After the first roller pass is made the wafer is rotated 90O and
a second pass is made to break the wafer into a plurality of
semiconductor segments. Boyd, col. 2, ll. 28-39; col. 2, l. 71 through
col. 3, l. 1; col. 3, ll. 6-17; and figs. 1 and 2.
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3. The encapsulated wafer is oriented such that the “scribed surface faces
the breaking pad 32 and the scribed lines are aligned parallel to the
axis of the roller.” Boyd, col. 3, ll. 9-11.
4. In a separate operation, after the semiconductor wafer has been
broken into a plurality of semiconductor segments, the encapsulated
semiconductor segments are placed on a vacuum mold including a
mold 20 and a retainer ring 21. Boyd, col. 3, ll. 56-57 and 64 and fig.
4.
5. An ordinary and customary meaning of the term “align” is “to be in or
come into precise adjustment or correct relative position.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY 28 (Tenth Ed. 1997).

PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (1987).
It is not necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference,
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i.e., that all of the limitations in the claim be found in or fully met by the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983).

OPINION
Both claims 18 and 21 require a process step of “aligning one of the
pre-scored planes with a splitting element.” According to the Examiner, the
pad 32 of Boyd satisfies the limitation of the claimed “splitting element”
because “item 32 clearly assists in the splitting of the circuit boards (column
3 lines 10-13) and is clearly called a ‘breaking pad’.” Ans. 4. Further, the
Examiner interprets the term “aligned” to mean that “any two items are
aligned at any given time” because “there is a straight line to any two points
[at] any given time.” Ans. 4. The Examiner finally concludes that because
the “breaking pad 32 is clearly underneath one of the pre-scored planes” and
“any two items are aligned at any given time,” the “pre-scored plane of the
circuit board array is on the breaking pad and therefore is aligned therewith.”
Ans. 4.
Although we agree with the Examiner that the breaking pad 32 of
Boyd satisfies the limitation of a “splitting element,” we find the Examiner’s
interpretation of the term “aligned” unreasonably broad. That is, according
to the Examiner, as long as a line can be drawn between two points on two
components respectively, then the two components are “aligned.” Hence,
according to the Examiner, any two components that occupy a defined space
and are in any relative position to each other are “aligned” as long as a line
can be drawn between two points on the two components, respectively.
Such an interpretation would eviscerate the meaning of the term “aligned” as
understood by a person of ordinary skill in the art. As noted above, claims
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are to be given their broadest reasonable interpretation consistent with the
Specification. An ordinary and customary meaning of the term “aligned” is
“to be in or come into precise adjustment or correct relative position” (FF 5).
In this case, Boyd teaches a method and a device for separating a
semiconductor wafer having a large number of circuits formed thereon into a
plurality of discrete sections by forming orthogonal scribe marks (pre-scored
planes) on the wafer and breaking the wafer along the scribe marks using a
roller (torque inducing element) and a breaking pad (splitting element) (FF 1
and 2). Boyd further teaches that in order for breakage to occur along the
scribe marks (pre-scored planes) the scribed lines must be “aligned parallel
to the axis of the roller [10]” (FF 3). (Emphasis added). Hence, according
to Boyd, the scribed lines (pre-scored planes) must be in a parallel
relationship (correct relative position) with respect to the axis of the roller
(torque inducing element), i.e., must be “aligned” parallel to the roller’s axis.
As such, Boyd teaches that the pre-scored planes (scribe lines) are aligned
with the torque inducing element (roller 10) and not the splitting element
(breaking pad 32), as required by claims 18 and 21. Therefore, Boyd does
not teach all the elements of claims 18 and 21. Accordingly, the rejection of
claims 18 and 21cannot be sustained.
With respect to claim 20, for the reasons discussed above, we find that
the apparatus of Boyd lacks “a transport element for automatically aligning
one of the pre-scored planes with said at least one splitting element.”
Moreover, we note that the retainer ring 21 of Boyd, which the Examiner
interprets as the claimed “transport element,” (Ans. 3) is part of a separate
mold device 20 which is used after the wafer has been broken into a plurality
of semiconductor segments (FF 4). Hence, we find that Boyd does not teach
a device for separating a semiconductor wafer into a plurality of discrete
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sections including a “transport element” for aligning a pre-scored plane
(scribe line) with the splitting element (breaking pad 32). Accordingly, the
rejection of claim 20 will not be sustained.

CONCLUSION
The Appellants have failed to demonstrate that the Examiner erred in
determining that Boyd teaches (1) aligning the splitting element with one of
the pre-scored planes and (2) a transport element for aligning the splitting
element with one of the pre-scored planes.

DECISION
The decision of the Examiner to reject claims 18, 20, and 21 is
reversed.

REVERSED

mls

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