Ex Parte Huang et alDownload PDFPatent Trial and Appeal BoardSep 29, 201613089977 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/089,977 04/19/2011 43859 7590 10/03/2016 SLATER MATSIL, LLP 17950 PRESTON ROAD, SUITE 1000 DALLAS, TX 75252 FIRST NAMED INVENTOR Kuei-Wei Huang 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 ATTORNEY DOCKET NO. CONFIRMATION NO. TSMl0-1327 1481 EXAMINER STONER, KILEY SHAWN ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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@slatermatsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KUEI-WEI HUANG, WEI-HUNG LIN, MENG-TSE CHEN, CHUN-CHENG LIN, YU-PENG TSAI, BOR-PING JANG, and CHUNG-SHI LIU Appeal2014-003622 Application 13/089,977 Technology Center 1700 Before PETER F. KRATZ, BEYERL YA. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1, 2, 10, and 11. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal2014-003622 Application 13/089,977 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below (with text in bold for emphasis): 1. An apparatus, comprising: an electrically non-conductive vacuum tip for attaching to an integrated circuit die comprising a vacuum port configured to connect to a vacuum supply on an upper surface and having a bottom surface; and a vacuum hole coupled to the vacuum port and extending through the vacuum tip and exposed at the bottom surface of the vacuum tip; wherein the bottom surface of the vacuum tip includes a pattern of vacuum paths continuously open at the bottom surface while extending radially outward from the vacuum hole and is configured to physically contact a surface of the integrated circuit die when the vacuum tip is lowered. The Examiner relies on the following prior art references as evidence of unpatentability: Otwell Zywno Cheung Kim et al. (hereafter "Kim") US 6,196,532 Bl US 2004/0161179 Al US 2006/0118168 Al US 2008/0066511 Al Maki et al. US 2008/0318346 Al (hereafter "Maki") Lu et al. US 2009/0031955 Al (hereafter "Lu") THE REJECTIONS iviar. 6, 200 l Aug. 19, 2004 June 8, 2006 Mar. 20, 2008 Dec. 25, 2008 Feb. 5,2009 1. Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lu in view of Otwell. 2 Appeal2014-003622 Application 13/089,977 2. Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cheung in view of Otwell. 3. Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zywno in view of Otwell. 4. Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kim in view of Otwell. 5. Claims 1, 2, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Maki in view of Otwell. ANALYSIS We select claim 1 as representative of all the claims on appeal, based upon Appellants' presented arguments. 37 C.F.R. § 41.37(c)(l)(iv)(2014). We adopt the Examiner's findings in the Answer and AFFIRM, and add the following for emphasis. Appellants' arguments are two prong. The first prong of Appellants' arguments focuses on the intended use/functional language of the claimed apparatus. The second prong of Appellants' arguments involve whether Otwell teaches away from the combinations in each of Rejections 1-5. Hence, our determinations with these two prongs are dispositive of each of the rejections in this appeal. With regard to the intended use/functional language of the claimed apparatus, Appellants argue that the Examiner cannot ignore the recitation of "wherein the bottom surface of the vacuum tip ... is configured to physically contact a surface of the integrated circuit die when the vacuum tip 3 Appeal2014-003622 Application 13/089,977 is lowered" for the reasons stated on pages 4---6 of the Appeal Brief. We are unpersuaded by such argument for the reasons stated by the Examiner on pages 3--4 of the Answer. The Examiner is correct that the claims are directed to an apparatus. It has long been held that "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). In this context, we agree with the Examiner's stated reply made on pages 5-8 of the Answer. The Examiner did not ignore recitations in the claims, and Appellants have not persuasively identified any actual structural differences between the apparatus of the claims and that of the prior art apparatuses. With regard to the second prong of argument, Appellants submit that the teachings of Otwell teach away for the combinations in each of Rejections 1-5, for the reason presented on pages 7-13 of the Appeal Brief. However, we are unpersuaded by such argument for the reasons provided by the Examiner on pages 8-10 of the Answer. Therein, the Examiner explains that Appellants' arguments do not properly address the basis of the rejection. The Examiner explains that the chuck structure of Otwell was not relied upon in making the rejection; rather, Otwell is solely being used in each of the obviousness rejections to establish that it is well known and obvious to form a vacuum tip/chuck/collet from a material that is electrically non- conductive (made of plastic). Ans. 8. The Examiner states that the claimed structure of the vacuum tip is clearly taught by Lu, Cheung, Zywno, Kim and Maki respectively. Accordingly, the Examiner states that Appellants' arguments concerning the structure of Otwell allegedly teaching away does 4 Appeal2014-003622 Application 13/089,977 not properly address the merits of the rejection as presented in the record. We agree. In view of the above, we AFFIRM each rejection. DECISION Each rejection is affirmed. TIME PERIOD 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. § 1.136(a). ORDER AFFIRMED 5 Copy with citationCopy as parenthetical citation