Ex Parte Holloway et al

Patent Trial and Appeal Board

Jul 30, 2013

11424735 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFERY GAIL HOLLOWAY, STEVEN ALFRED
KUMMERL, and BERNARD PETER LANGE
____________________

Appeal 2011-000234
Application 11/424,735
Technology Center 2800
____________________

Before: JEAN R. HOMERE, ELENI MANTIS MERCADER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/424,735

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-111. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a method for manufacturing transparent
windows in molded semiconductor packages. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for packaging a light-sensitive semiconductor
device comprising the steps of:
affixing a transparent body to a light-sensitive surface of
the semiconductor device, the transparent body comprising side
surfaces and an outer surface;
affixing the device to a leadframe;
placing the assembled leadframe, device, and transparent
body into a mold, the mold configured for contacting the outer
surface of the transparent body;
encapsulating the assembled leadframe and device within
the mold; and
removing the mold, thereby forming a package encased
in encapsulant and having a transparent window aligned with
the light-sensitive surface of the device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nakamura US 5,405,809 Apr. 11, 1995

1 In the Notice of Appeal filed Jan. 8, 2010, Appellants indicate that the
rejections of claims 1-11 are appealed while the Appeal Brief states that the
rejections of claims 2-10 are not being pursued. Accordingly, Appellants
have waived any argument rebutting the rejections of claims 2-10 omitted
from the appeal brief.
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Kaldenberg
Sasano
Peterson
Hawthorne
US 5,863,810
US 6,531,334 B2
US 6,489,670 B1
US 2005/0266602 A1
Jan. 26, 1999
Mar. 11, 2003
Dec. 3, 2002
Dec. 1, 2005

REJECTIONS2
The Examiner made the following rejections:
Claims 1-3 and 8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kaldenberg . Office Action of Oct. 8, 2009 (O.A.) at 2.
Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaldenberg and Sasano. O.A. 4.
Claims 5 and 11stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaldenberg and Nakamura. O.A. 4, 7.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaldenberg, Sasano, and Nakamura. O.A. 5.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaldenberg and Peterson. O.A. 6.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaldenberg and Hawthorne. O.A. 6.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 3-6),
the issues presented on appeal are:

2 Claims 1 and 11 are separately argued. Claims 2-10 are not argued
separately, Appellants indicate that “[c]laims 2 through 10 are not under this
appeal.” App. Br. 2. In view of the foregoing, we consider only the
rejections of claims 1 and 11 and summarily affirm the rejections of claims
2-10.
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Claim 1
1. Whether Kaldenberg discloses
a. “the transparent body comprising side surfaces and an outer
surface.” App. Br. 4.
b. “the mold configured for contacting the outer surface of the
transparent body.” Id.
Claim 11
2. Whether the combination of Kaldenberg and Nakamura is proper
under 35 U.S.C. § 103(a). App. Br. 5-6.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions as to all rejections. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. For emphasis we highlight
Appellants’ arguments seriatim as they are presented in the Appeal Brief,
pages 3-6.
Claim 1
Appellants contend that “[t]he Office Action failed to articulate as
what feature in reference 16 [of Kaldenberg] anticipates the side surfaces
and what feature in reference 16 anticipates the outer surface of the
transparent body.” App. Br. 4. The Examiner responds that, with reference
to transparent resin / window 16 depicted in Fig. 3d of Kaldenberg, “[t]he
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side surfaces are the circumference of the transparent body and the flat
bottom surface” and “[t]he circumference surface is also the outer surface.”
Ans. 5. We find the Examiner’s interpretation to be reasonable.
Appellants’ Specification as originally filed provides no definition of
either “side surface” or “outer surface,” never using the former phrase and
making only passing reference to the latter. For example, with reference to
Fig. 1E, Appellants’ Specification describes that “mold 22 preferably also
provides for the exclusion of mold compound 24, as shown in Figure 1 E,
from at least a portion of the outer surface of the transparent body 18.” Spec.
[041]. Failing to define or even provide labels designating portions of
transparent body 18 depicted in the Figures that are considered to be side or
outer surfaces, we broadly interpret the disputed terms, giving them their
ordinary and customary meaning consistent with the Specification.3
The term “side” may be defined as “a line bounding a plane figure” or
“a surface bounding a solid figure”; “outer” as “located on the outside,
external” and “surface” as “the outer . . . boundary of an object.” 4 Based on
these meanings, a cursory review of Kaldenberg’s Figures confirms that

3 Where no explicit definition for a term is given in the specification, the
term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368
(Fed. Cir. 2003). The ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1319 (Fed. Cir. 2005) (en banc). An applicant is entitled to be his or her own
lexicographer and may rebut the presumption that claim terms are to be
given their ordinary and customary meaning by clearly setting forth a
definition of the term that is different from its ordinary and customary
meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
4 The American Heritage Dictionary of the English Language, Houghton
Mifflin Company, 1981.
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transparent resin 16 includes “side surfaces” and an “outer surface.”
Therefore, in the absence of sufficient evidence or argument that the
Examiner’s interpretation of the disputed terminology is in error, we find
that Kaldenberg discloses a transparent body comprising side surfaces and
an outer surface.
Appellants further contend that “[t]he Office Action failed to point to
the reference the location where the element that the mold must be
configured for contacting the outer surface of the transparent body is
taught.” App. Br. 4. The Examiner responds “the mold is formed around the
transparent body.” Ans. 5 citing Kaldenberg, Fig. 4, reference 30. We agree
with the Examiner. Fig. 4 of Kaldenberg depicts mold 30, the specification
describing that “[p]art of the inner wall of the upper section 30a [of mold
30], roughly indicated by the distance indication 34a, will during the
manufacturing process come into contact with the transparent resin 16”
(emphasis added). Therefore we agree with the Examiner’s finding that
Kaldenberg discloses “the mold configured for contacting the outer surface
of the transparent body.” See Ans. 3. Accordingly, we sustain the rejection
of claim 1 together with the rejections of claims 2-10 not separately argued.

Claim 11
Appellants contend that “the Final Action failed to set forth a prima
facie case against claim 1 [sic.]5 because the purported reason for modifying
Kaldenberg with the teachings of Nakamura is not based on evidence or
scientific reasoning.” App. Br. 5. In particular Appellants argue that “the

5 For purposes of this opinion, we presume Appellants intended to refer to
claim 11.
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Kaldenberg reference is incapable of being combined with the cited method
of curing taught in the Nakamura reference.” Id. The Examiner responds:
Nakamura et al is used for further support of the Kaldenberg
reference because Kaldenberg did not use the specified
terminology of curing but the transparent body is clearly cured.
Kaldenberg reference discloses the resin is softened to some
degree and then by raising the temperature, the resin is
hardened (column 3, lines 23-40). However, Kaldenberg doesn't
specifically use the term cure or curing of the resin. By
definition, curing refers to the toughening or hardening of a
polymer material by cross-linking of polymer chains, brought
about by chemical additives, ultraviolet radiation, electron
beam or heat. This is shown in the Kaldenberg reference.
Nakamura et al is relied on for just teaching that the resin is
specifically cured (actual terminology). Nakamura et al further
supports the primary reference and shows curing by heat, and
by UV rays (column 7, lines 53-59).

Ans. 5-6.
We find Appellants have provided insufficient evidence or argument
to persuade us that the hardening process of Kaldenberg fails to disclose
curing or of other reversible error in formulating the rejection. Instead we
agree with the Examiner that Kaldenberg alone without the addition of
Nakamura discloses curing. Id. We further disagree with Appellants that the
combination is improper because the Examiner does not explain how to
combine the different curing processes of Kaldenberg and Nakamura
because the Examiner does not rely on Nakamura for disclosing a specific
curing process, only as evidence that the hardening process disclosed by
Kaldenberg is known as curing. Therefore, we find that the combination of
Kaldenberg and Nakamura teaches or suggests curing the fluid transparent
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material on the light-sensitive surface of the semiconductor device to form a
transparent body.
We are also unpersuaded that the combination of Kaldenberg and
Nakamura is improper because “the Examiner fails to come forth with a
supportable rationale why a skilled person would be motivated to perform
this combination.” App. Br. 6. The Examiner finds that “[i]t would have
been obvious, at the time the invention was made, for one having ordinary
skill in the art, to modify Kaldenberg with the teachings of Nakamura et al,
for the purpose of curing the fluid transparent material in order to improve
the mounting yield in image sensor devices.” Ans. 5. We agree with the
Examiner. Upon reviewing the record before us, we find that the Examiner
has articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness. Therefore, Appellants’ assertion that the
references were improperly combined is not persuasive of error and
accordingly, the Examiner has properly relied upon the combination of
Kaldenberg and Nakamura in formulating the disputed rejections under 35
U.S.C. § 103(a). Furthermore, as explained supra, we find that Kaldenberg
standing alone teaches the disputed limitation of claim 11 including curing
the fluid transparent material. Therefore, we find Appellants’ contentions
lack sufficient evidence or argument to persuade us of reversible error and
we sustain the rejection of claim 11.
CONCLUSION
The Examiner did not err in finding that Kaldenberg discloses (1) “the
transparent body comprising side surfaces and an outer surface.” and (2)
“the mold configured for contacting the outer surface of the transparent
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body” and that the combination of Kaldenberg and Nakamura is proper
under 35 U.S.C. § 103(a). Therefore, we sustain the rejections of:
Claims 1-3 and 8 under 35 U.S.C. § 102(b) as being anticipated by
Kaldenberg.
Claims 4 and 9 under 35 U.S.C. § 103(a) over Kaldenberg and
Sasano.
Claims 5 and 11 under 35 U.S.C. § 103(a) over Kaldenberg and
Nakamura.
Claim 10 under 35 U.S.C. § 103(a) over Kaldenberg, Sasano, and
Nakamura.
Claim 6 under 35 U.S.C. § 103(a) over Kaldenberg and Peterson.
Claim 7 under 35 U.S.C. § 103(a) over Kaldenberg and Hawthorne.

DECISION
The Examiner’s decision to reject claims 1-11 is affirmed.
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)(iv).

AFFIRMED

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