Ex Parte Iy et al

Board of Patent Appeals and Interferences

Aug 17, 2009

11347569 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HYUN-GUEN IY, JEONG-HO BANG,
HYUN-SEOP SHIM, JAE-IL LEE, and KUM-JIN YUN
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Appeal 2009-003280
Application 11/347,569
Technology Center 2800
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Decided: August 17, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 7-21, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
BACKGROUND

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The invention relates to an alignment tool (independent claim 23), as
well as a test kit for a semiconductor package, and a head assembly,
including such an alignment tool (independent claims 1, 21, respectively),
and a method of testing a semiconductor package using such an alignment
tool (independent claim 14).
Claim 23 is illustrative (emphasis added):
23. An alignment tool comprising:

an alignment tool body;

at least one latch press arranged on a bottom surface of the alignment
tool body to press at least one latch driver of the socket1; and

at least one slide post arranged on a bottom surface of the alignment
tool body to press at least one slide driver of the socket.

The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings of Jung2 and
Min.3
Appellants present separate arguments concerning rejected
independent claims 1, 14, 21 and 23 (Br. 4-13). Appellants do not separately
argue any of the dependent claims. Independent claims 1, 14, and 21
contain the limitation of independent claim 23 that is the primary basis of
Appellants’ disagreement. Thus, our discussion will first focus on
independent claim 23, and then address the remaining independent claims.
MAIN ISSUE ON APPEAL

1 The claim lacks antecedent basis for “the socket”.
2 US Patent Application 2003/0034280 A1 published Feb. 20, 2003.
3 US Patent Application 2004/0112142 A1 published Jun. 17, 2004.
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Have Appellants shown reversible error in the Examiner’s conclusion
of obviousness by establishing that the applied prior art does not teach or
suggest “at least one latch press arranged on a bottom surface of the
alignment tool body to press at least one latch driver of the socket” as
recited in each independent claim (emphasis added)?
This issue turns on whether the prior art structural element labeled
“exit portion 72b” of Jung is a “protuberance” which is capable of pressing a
latch driver, as argued by the Examiner (see, e.g., Ans. 14), or merely “a
space” which “cannot press a latch driver” as argued by Appellants (see,
e.g., App. Br. 14, 16, 18, 19).
We answer this question in the negative, and find that the term “latch
press” only limits the claims to a structure that must be capable of pressing
at least one latch driver as claimed. Appellants have not shown error in the
Examiner’s reasonable position that the prior art structural element labeled
“exit portion 72b” of Jung is a “protuberance” which is capable of pressing a
latch driver.
FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
Since we are in substantial agreement with the Examiner’s position,
we adopt the Examiner’s findings of fact with respect to independent claims
1, 14, 21, and 23 as set forth on pages 3-12 of the Answer, as well as the
Examiner’s analysis in the “Response to Argument” section as set out on
pages 13-17 of the Answer, as our own.
The Examiner correctly found that Jung describes an alignment tool
that includes a “protuberance” (i.e., a protrusion) 72b, as well as guide pins
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73 (i.e., “slide posts”). The Examiner found that protrusion 72b was capable
of pressing a latch driver (see, e.g., Ans. 17).
Appellants’ Specification provides no definition of the term “latch
press”, nor of the terms “alignment tool” and “package guider” (see
generally Spec.). Indeed, the Specification makes it clear that any
embodiments described therein as well as any “specific structural or
functional details disclosed” therein “should not be construed” as limiting
their invention (Spec. 5, para. [00039], emphasis added; also para. [00038],
[00040] to [00042]).
Appellants admit as prior art that latches are used to secure
semiconductor packages that have been placed in a socket for testing (e.g.,
Spec. 3, para. [00012] describing “conventional latch 204”; Figs. 4, 5).
Appellants do not dispute the Examiner’s finding that Min describes
at least one latch driver for holding the IC package firmly on the socket
during testing (Ans. 6; see generally Br.). Min also describes a head
assembly with a pick-and-place tool operating space for loading and
unloading a number of semiconductor packages (Min, p. 2, para. [0041]).
Min also describes a “package guider 102” located within the head assembly
100 (Min, p. 2, para. [0040]).
The Specification discloses the alignment tool is configured to align a
head assembly with the socket (Spec. 3, para. [00016]). The head assembly
is “suitable for substantially simultaneous loading and/or unloading of a
plurality of semiconductor packages” (Spec. 7, para. [0049]).
Appellants’ Figure 13 reproduced below illustrates the claimed
alignment tool:
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Fig. 13 of Appellants depicts an alignment tool including multiple
“protrusions”, that include “one or more latch presses” 304 and “one or more
slide posts” 306 (Spec. 7, para. [00046]). The “example embodiment”
describes the latch presses 304 as well as the slide posts 306 as “protrusions”
of the alignment tool (id.). The alignment tool may be positioned at a lower
portion of a head assembly and may perform one or more functions (Spec. 8,
para. [00050]).
No Reply Brief has been filed.
PRINCIPLES OF LAW
The burden is on Appellants to identify reversible error in the
appealed § 103 rejection. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed. Cir.
2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997). Furthermore,
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[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

(Id, 128 F.3d at 1478, (quoting In re Swinehart, 439 F.2d 210, 213
(CCPA 1971)).
“[E]vidence establishing lack of all novelty in the claimed invention
necessarily evidences obviousness.” In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982).
ANALYSIS
The combination of Jung and Min was applied by the Examiner to
address the combination of the claimed alignment tool in a test kit (claim 1),
or in a head assembly (claim 21), or in a method of testing a semiconductor
package (claim 14). However, we first address Appellants’ argument that is
directed to the subcombination of the alignment tool per se, that is,
independent claim 23.
Appellants repeatedly contend (with respect to each independent
claim) that the Examiner’s rejection must be overturned because Jung
describes a space at 72b, and “a space cannot press a latch driver”. (See
generally, App. Br.; Reply Br.). This contention is not persuasive of
reversible error for the following reasons.
It is axiomatic that claims are given their broadest reasonable
interpretation in light of the specification as they 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). Claim 23 recites “at least one latch press”, and
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then further defines the function of the latch press, i.e., “to press at least one
latch driver”. As such, we are only required to give such language weight to
the extent that the prior art is or is not capable of meeting the functional
limitation. See e.g., In re Schreiber, 128 F.3d at 1478-1479 (the functional
limitations at issue were found to be inherent in the prior art reference).
We agree with the Examiner that the portion 72b is plainly depicted as
a protuberance, i.e., a collar or rim, in the Figures of Jung (see, Fig. 8a, 8b)4.
Once the Examiner has identified structure in the prior art that he has reason
to believe possesses the functional characteristic recited, it is Appellants’
burden to prove that the subject matter shown to be in the prior art does not
possess the characteristic relied upon. Schreiber, 128 F. 3d at 1478.
However, Appellants have proffered no convincing line of technical
reasoning nor evidence that the protrusion (i.e., collar or rim) 72b of Jung is
not capable of pressing a latch driver. Appellants have not provided
evidence that establishes the portion 72b is just a space and not a protrusion.
It has not escaped us that both Appellants and Jung have the same assignee.
Manifestly, no one is in better position than Appellants to clarify on this
record the capabilities of the structure depicted in Jung.
Based on the foregoing, it is reasonable to conclude that the structure
recited in claim 23 reads on the structure described in Jung. In this regard,
lack of novelty is the ultimate or epitome of obviousness. In re Fracalossi,
681 F.2d at 794.

4 In this regard, we note that drawings can be relied upon for what they
reasonably disclose and suggest to one of ordinary skill in the art. See In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972), and In re Aslanian, 590 F.2d 911,
914 (CCPA 1979).
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Appellants do not argue the obviousness of combining Jung and Min
as the Examiner proposed, rather, they contend that the combination fails to
teach and suggest every limitation recited in the independent claims (Br. 12).
With respect to claim 1, Appellants additionally contend that the
Examiner “has not identified an ‘operating space’ in Jung or in Min”, (Br.
12) and that the head assembly 70 of Jung as identified by the Examiner
does not include both an operating space and an alignment tool as claimed
(Br. 13). These arguments are not persuasive of error for the reasons well
stated by the Examiner (Ans. 13). Appellants have not addressed the
Examiner’s response and explained why the portions of the references cited
by the Examiner are in error. Additionally, Min5 also describes a head
assembly and an operating space (see FF).
With respect to claims 14 and 21, Appellants further contend that
there is no “package guider” in Jung (Br. 14-16). We understand the
Examiner’s position to be that the claimed “package guider” may be “a part
of the alignment tool” (see, e.g., Ans. 16). Appellants have not shown error
in the Examiner’s reasonable position that at least the “guide portion 72c” of
Jung (Figs. 8a, 8b; p. 3, para. [0044]; emphasis provided) reasonably teaches
or suggests “a package guider” as claimed, while the entrance portion 72a,
protuberance 72b and guide pins 73 reasonably define the alignment tool,
especially in light of the breadth of the terms “package guider” and
“alignment tool” (see FF).6

5 Both Appellants and Min have the same assignee.
6 Moreover we note that the “guide block 71” of Jung (Figs. 8a, 8b; p. 3,
para. [0044]) reasonably teaches or suggests “a package guider” as recited in
claims 14 and 21 (emphasis added). Additionally, the “guide block fixing
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In addition, Min exemplifies that a “package guider 102” was a
known prior art element (see FF). Accordingly, one of ordinary skill in the
art would have found it prima facie obvious to use both a known “package
guider” as well as a known “alignment tool” to ensure accurate placement of
the semiconductor package into the test socket. See also, e.g., KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420-421 (2007) (one of ordinary skill in the
art is “also a person of ordinary creativity, not an automaton”).
For the foregoing reasons, we agree with the Examiner’s findings in
support of obviousness for the subject matter of claim 23, as well as the
subject matter of claims 1, 14 and 21, based on the applied prior art.
ORDER
The Examiner’s rejection of claims 1-4, 7-21, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings of Jung and Min
is affirmed.
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

ssl

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON VA 20195

plate 70” of Jung (p. 3, para. [0041]) may also be viewed as reasonably
teaching or suggesting “a package guider” as recited therein.
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