Ex parte HUAT

Board of Patent Appeals and Interferences

Mar 24, 2000

08152192 (B.P.A.I. Mar. 24, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte NG WEE HUAT
_____________
Appeal No.1996-2956
Application 08/152,192
______________
HEARD: MARCH 9, 2000
_______________
Before HAIRSTON, FLEMING, and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 27 through 34, all of the claims pending in the present
application. Claims 1 through 26 have been canceled.
Appeal No. 1996-2956
Application 08/152,192
2
The invention relates to a testing and finishing
system for integrated circuit package units (ICPUs). In
particular, Appellant discloses on page 2 of the specification
that the present invention has integrated all individual
operations into one assembly linking all the equipment and
stations together forming an auto-test and finishing system.
A copy of independent claim 27 is attached to this decision.
The Examiner relies on the following references:
Wilkin et al. (Wilkin) 3,842,957 Oct. 22, 1974
Swapp et al. (Swapp) 4,776,747 Oct. 11, 1988
Takemoto et al. (Takemoto) 4,850,103 July 25, 1989
Pearson 4,878,801 Nov. 7, 1989
Nara 4,969,199 Nov. 6,
1990
Yonemura 58-18930 Jan. 3, 1983
(Japanese Patent)
Kodama 60-161629 Aug. 23, 1985
(Japanese Patent)
Yabe 60-153133 Aug. 12,
1985
(Japanese Patent)
Noguchi 61-30041 Feb. 12, 1986
(Japanese Patent)
Fukui 62-86832 Apr. 21, 1987
(Japanese Patent)
Matsunaga 63-257250 Oct. 25, 1988
(Japanese Patent)
Appeal No. 1996-2956
Application 08/152,192
Appellant filed an appeal brief on June 23, 1995. 1
Appellant filed a reply brief on October 23, 1995. The
Examiner mailed a communication on February 6, 1996 stating
that the reply brief has been entered and considered but no
further response by the Examiner is deemed necessary.
3
Tomita l-181551 July 19, 1989
(Japanese Patent)
Claims 27 through 31, 33 and 34 stand rejected under 35
U.S.C. § 103 as being unpatentable over Appellant's admitted
prior art, Swapp, Kodama, Fukui, Tomita, Wilkin, Takemoto,
Yonemura, Nara, Noguchi and Pearson.
Claim 32 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Appellant's admitted
prior art, Swapp, Kodama, Fukui, Tomita, Wilkin, Takemoto,
Yonemura, Nara, Noguchi and Pearson, and further in view of
Yabe and Matsunaga.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the briefs and the answer for1
the respective details thereof.
OPINION
We will not sustain the rejection of claims 27 through 34
under 35 U.S.C. § 103.
Appeal No. 1996-2956
Application 08/152,192
4
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 519 U.S. 822 (1996), citing W. L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 16-24 of the brief, Appellant argues that the
Examiner has failed to recognize that the prior art does not
teach automatic transportation of unenclosed ICPUs from one
treatment or test station to another. Appellant further
argues that the Examiner has failed to recognize that the
prior art does not teach the integration of treatment and test
stations for testing, marking, sorting, and packing ICPUs of
Appeal No. 1996-2956
Application 08/152,192
5
different categories without the need to package and repackage
ICPUs before separate individual process operations are
performed. On page 2
of the reply brief, Appellant further argues that the prior
art does not teach the continuous linking of process stations
and the automatic movement of unenclosed ICPUs from one
process station to another process station. On page 23 of the
brief, Appellant further argues that there must be some
logical reason for combining the prior art and formulating a
rejection other than the hindsight gleaned from the invention
itself. Appellant argues that it appears that the Examiner's
compilation of prior art is not based upon any logical
connection of such art, but upon an attempt to fashion a
theory extracted from Appellant's teachings.
On page 9 of the answer, the Examiner responds to
Appellant's argument stating that it has been recognized that
any judgment on obviousness is, in a sense, necessarily a
reconstruction based upon hindsight reasoning. The Examiner
further states that so long as the Examiner's rejection takes
Appeal No. 1996-2956
Application 08/152,192
6
into account only the knowledge which was within the level of
ordinary skill at the time the claimed invention was
conceived, and so long as the rejection does not include
knowledge gleaned only from Appellant's disclosure, such a
reconstruction is proper.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that “[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.”
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), citing In
re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA
1976)(considering the problem to be solved in a determination
of obviousness). The Federal Circuit reasons in Para-Ordnance
Mfg. Inc. v. SGS Importers Int’l Inc., 73 F.3d 1085, 1088-89,
Appeal No. 1996-2956
Application 08/152,192
7
37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert. denied, 519
U.S. 822 (1996), that for the determination of obviousness,
the court must answer whether one of ordinary skill in the art
who sets out to solve the problem and who had before him in
his workshop the prior art, would have been reasonably
expected to use the solution that is claimed by the
Appellants. However, "[o]bviousness may not be established
using hindsight or
Appeal No. 1996-2956
Application 08/152,192
8
in view of the teachings or suggestions of the invention."
Para-Ordnance Mfg. v. SGS Importers Int'l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13. In
addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50
USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
Upon our review of the references cited by the Examiner,
we fail to find that the Examiner has made specific findings
on a suggestion to combine these prior art references. In
particular, we fail to find that the Examiner has shown that
the prior art suggests automating transportation of unenclosed
ICPUs from one treatment or test station to another station.
In addition, the Examiner has failed to show that the prior
art teaches or suggests the integration of treatment and test
stations for testing, marking, sorting and packing ICPUs of
different categories without the need to package and repackage
ICPUs before separate individual process operations are
performed.
Appeal No. 1996-2956
Application 08/152,192
9
In view of the foregoing, we will not sustain the
rejection of claims 27 through 34 under 35 U.S.C. § 103.
Accordingly, the Examiner's decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1996-2956
Application 08/152,192
10
PHILIP RODMAN
RODMAN & RODMAN
7-11 S. BROADWAY
WHITE PLAINS, NY 10601
MRF/dal
Appeal No. 1996-2956
Application 08/152,192
1
APPENDIX
27. A method of testing, marking, sorting and packing
different classification of integrated circuit package units
(ICPUs) that are initially enclosed in carrier tubes
comprising,
a) automatically positioning carrier tubes containing
ICPUs in a position that locates the ICPUs in a dead bug
orientation,
b) automatically moving the carrier tubes with the ICPUs
in the previously positioned dead bug orientation to a
conditioning station,
c) automatically unloading the ICPUs from the carrier
tubes at the conditioning station in the dead bug orientation
such that the ICPUs are unenclosed, and automatically
conditioning the individual, unenclosed ICPUs with heat,
d) automatically transporting the conditioned ICPUs,
while unenclosed and in the dead bug orientation, from the
conditioning station to an environmental test station and
automatically testing the electrical parameters of the
conditioned ICPUs at the environmental test station while the
ICPUs are in the dead bug orientation,
e) automatically cooling the conditioned and unenclosed
ICPUs while the ICPUs are in the dead bug orientation and
automatically transporting the cooled ICPUs, while the ICPUs
are unenclosed and in the dead bug orientation, from the
environmental test station to an ambient temperature test
station,
f) automatically testing the cooled ICPUs at the ambient
temperature test station for quality assurance while the ICPUs
are unenclosed and in the dead bug orientation and thereafter
automatically transporting the quality tested ICPUs, while
unenclosed and in the dead bug orientation, from the ambient
temperature test station to an orientation station,
Appeal No. 1996-2956
Application 08/152,192
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g) automatically orienting the quality tested ICPUs at
the orientation station while the ICPUs are unenclosed, from
the dead bug orientation to a live bug orientation and
automatically transporting the ICPUs while unenclosed and in
the live bug orientation from the orientation station to a
degreasing station,
h) automatically degreasing the ICPUs at the degreasing
station while the ICPUs are unenclosed and in the live bug
orientation and automatically transporting the degreased
ICPUs, while the ICPUs are unenclosed and in the live bug
orientation, from the degreasing station to a marking station,
i) providing a set of markers at the marking station,
such that each marker in the set has different classification
indicia corresponding to each different classification of the
ICPUs and automatically marking the degreased ICPUs at the
marking station while the ICPUs are unenclosed and in the live
bug orientation, with a classification indicia that
corresponds to the classification of the ICPU, and
automatically transporting the marked ICPUs, while the ICPUs
are unenclosed and in the live bug orientation, from the
marking station to an ultraviolet station,
j) automatically heating the marked ICPUs at the
ultraviolet station while the ICPUs are unenclosed and in the
live bug orientation, using an ultraviolet source, and
automatically transporting the heated ICPUs, while the ICPUs
are unenclosed and in the live bug orientation, from the
ultraviolet station to a lead straightening station,
k) automatically scanning all the ICPUs at the lead
straightening station while the ICPUs are unenclosed and in
the live bug orientation, for any bent leads and automatically
straightening any bent leads of the ICPUs while the ICPUs are
in the live bug orientation, and automatically transporting
the ICPUs, while the ICPUs are unenclosed and in the live bug
orientation, from the lead straightening station to a binning,
buttoning and packing station,
Appeal No. 1996-2956
Application 08/152,192
3
l) at the binning, buttoning and packing station,
automatically segregating ICPUs of common classification while
the ICPUs are unenclosed and automatically loading the ICPUs
of common classification into empty tubes that are buttoned at
one end and automatically buttoning the other end of the tubes
when they are loaded with ICPUs of common classification, and
m) linking the conditioning station, the environmental
test station, the ambient temperature test station, the
orientation station, the degreasing station, the marking
station, the ultraviolet station, the lead straightening
station and the binning, buttoning and packing station
together in a continuous cooperative assembly to permit the
unenclosed ICPUs to be transported automatically from station
to station and integrating all individual operations to form a
completely integrated auto testing and finishing system that
enables the ICPUs to be automatically transported, while
unenclosed, from station to station such that the automated
linking of stations eliminates manual loading and unloading of
ICPUs at each station.