Ex Parte Lowry

Board of Patent Appeals and Interferences

May 31, 2006

09949736 (B.P.A.I. May. 31, 2006)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT K. LOWRY
_____________
Appeal No. 2005-2489
Application No. 09/949,736
______________
ON BRIEF
_______________
Before MCQUADE, PAK and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s refusal
to allow claims 19 through 38 and 40 through 44. Claim 39, the
only other claim pending in the present application, was
indicated to be allowable “if rewritten independent form
including all of the limitations of the base claim and any
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Application No. 09/949,736
Claim 28 recites “means for adjusting the orientation1
. . . ” corresponding to the hinge limitation recited in claim
39. However, the examiner has not indicated it to be allowable
over the prior art cited. Nor has the appellant specifically
argued the patentability of this limitation in the Brief.
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intervening claims.” See the Supplemental Answer, page 2. We1
have jurisdiction pursuant to 35 U.S.C. § 134.
APPEALED SUBJECT MATTER
The subject matter on appeal is directed to an apparatus for
removing a plastic encapsulant from an integrated circuit. See
the specification, page 1. The apparatus includes a chamber, a
stage, a laser and a means for relatively moving a plastic
encapsulated integrated circuit with respect to a laser beam
(different from the stage). See, e.g., claim 19. The stage “is
an X, Y positioning table . . . . Such X, Y positioning tables
are well known in the art.” See the specification, page 3. A
hinge may be provided at one end of the table so that the plastic
encapsulated integrated circuit can be rotated to a substantially
vertical position. Id. “In its vertical position, the laser
beam 26 has an acute angle of incidence on the surface of the
[plastic encapsulated integrated circuit].” Id. Details of the
appealed subject matter are provided in illustrative claims 19
and 37, which are reproduced below:
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19. An apparatus for removing a plastic resin
encapsulant form an encapsulated integrated circuit
comprising:
a chamber having an optical opening, a dispersion
fluid inlet and an exhaust outlet;
a laser mounted on the outside of the chamber and
aligned with the optical opening for directing a laser beam
onto a surface of the encapsulated integrated circuit for
selectively removing portions of the encapsulant; and
means for relatively moving the integrated circuit
with respect to the laser beam.
37. An apparatus for removing encapsulant from a
device [sic] under test (DUT), the apparatus comprising:
a chamber having an optical opening, a dispersion
fluid inlet and an exhaust outlet, the optical opening adapted to
allow a laser to direct a laser beam on a surface of the DUT for
removing portions of the encapsulant;
a stage in the chamber adapted to receive and hold
the DUT; and
a dust bin in the chamber adapted to collect
debris from the removed portions of the encapsulant.
THE PRIOR ART REFERENCES
The examiner relies upon the following prior art references
in support of the Sections 102(b) and 103(a) rejections before
us:
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Application No. 09/949,736
For purposes of this appeal, we limit our discussion to2
the claim specifically argued by the appellant in accordance with
37 CFR § 41.37(c)(1)(vii).
4
Karlson 4,052,603 Oct. 4, 1977
Gartner et al. (Gartner) 5,254,832 Oct. 19, 1993
Somers et al. (Somers) 6,140,604 Oct. 31, 2000
THE REJECTIONS
The appealed claims stand rejected as follows:
(1) Claims 19 through 33, 37, 40 and 42 through 44 under
35 U.S.C. § 102(b) as anticipated by the disclosure of Gartner;
(2) Claim 38 under 35 U.S.C. § 103 as unpatentable over the
disclosure of Gartner;
(3) Claims 34 through 36 under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of Gartner and Somers; and
(4) Claim 41 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Gartner and Karlson.
OPINION
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments and evidence
advanced by the examiner and the appellant in support of their
respective positions. As a result of this review, we made the
determinations which follow.2
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We begin with the claim language. Gechter v. Davidson,
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994). Generally, we interpret the claims on appeal
by giving words therein the broadest reasonable meanings in their
ordinary usage, taking into account the written description in
the appellant’s specification. See, e.g., In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re
Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir.
1984). When the words in the claim are written in “means-plus-
function” formats, however, we interpret them as being limited to
the corresponding structures described in the specification and
the equivalents thereof in accordance with the requirements of
35 U.S.C. § 112, paragraph 6. In re Donaldson, 16 F.3d 1189,
1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994)(in banc). The manner
in which a “means-plus-function” element is expressed, either by
a function followed by the term “means” or by the term “means
for” followed by a function, is unimportant so long as the
modifier of that term specifies a function to be performed.
Ex part Klumb, 159 USPQ 694, 695 (Bd. App. 1967). The use of the
term “means” in the claim raises a presumption that the means-
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According to page 586 of WEBSTER’S II New Riverside3
University Dictionary (1994)(attached to this decision), the
meaning of the term “hold” embraces “support”.
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plus-function element is intended. See Sage Prods. Inc. v. Devon
Indus., Inc., 126 F.3d 1420, 1427, 44 USPQ2d 1103, 1109 (Fed.
Cir. 1997). Nevertheless, such presumption is not applicable if
the claim recites sufficient structures for carrying out the
function of the means-plus-function element. See Enviroco Corp v.
Clestra Cleanroom, Inc., 209 F. 3d 1360, 1364-65, 54 USPQ2d 1449,
1452-53 (Fed. Cir. 2000); Al-Site Corp. v. VSI Int’l Inc.,
174 F.3d 1308, 1319, 50 USPQ2d 1161, 1167 (Fed. Cir. 1999);
Unidynamics Corp. v. Automatic Products International Ltd.,
157 F.3d 1311, 1319, 48 USPQ2d 1099, 1104-1105 (Fed. Cir. 1998).
Applying the above precedents to the present case, we
interpret the term “stage in the chamber adapted to receive and
hold an encapsulated integrated circuit” as used in claims 19 and
37 as including any conventional X, Y positioning table capable
of receiving and holding (supporting) an encapsulated integrated 3
circuit. This interpretation is consistent with the written
description found at page 3 of the specification, which states in
relevant part:
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The stage 2 is an X, Y positioning table . . . .
Such X, Y positioning tables are well known in the art.
With respect to the phrase “means for relatively moving the
integrated circuit with respect to the laser beam” recited in
claim 19, we treat it as a means-plus-function limitation
pursuant to 35 U.S.C. § 112, paragraph 6. Accordingly, we
consult the specification to determine the scope of such a means-
plus-function limitation. As is apparent from dependent claims
20 through 22, the means-plus-function limitation recited in
claim 19 is broad enough to encompass those corresponding to the
means-plus-function limitations recited in claims 20 through 22.
We observe that the specification does not explicitly link
the means-plus-function element recited in claim 19 to any
specific structure. Rather, the specification states (page 3,
lines 23-26, page 4, lines 6-11 and page 5, lines 8-10) that:
The stage 2 is an X, Y positioning table...Such X, Y
positioning tables are well known in the art. They may
be operated using piezoelectric operators, linear
magnetic motors, or lead screws . . . .
. . . .
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. . . The CPU 51 controls operations of the various
components of the apparatus 100 via the control bus 30
and control lines 31-36 that respectively connected to
. . . laser 8, stage 2 . . . By manual, automatic or
semiautomatic operation, the operator may selectively
operate any of the controlled components, move the
stage to its desired X, Y position, and rotate the top
platform of the stage to its desired Z axis orientation
. . . . Of course, if desired, the laser beam 26 may
be raster-scanned using optical methods, including
prisms and/or mirrors that are selectively moved to
sweep the beam across the surface of the DUT 24.
Implicit in this disclosure is that the means-plus-function
element recited in claim 19 includes any conventional structures
of piezoelectric operators, linear magnetic motors, lead screws
and/or controllers (CPUs) for automatically or manually
controlling the movement of a conventional laser and/or a X, Y
positioning table capable of holding or supporting a plastic
encapsulated integrated circuit.
Having interpreted the claims on appeal as indicated supra,
we shall evaluate the merits of the examiner’s Sections 102 and
103 rejections. To establish an anticipation under Section 102,
the examiner must demonstrate that Gartner relied thereupon
describes, either expressly or under the principles of inherency,
each and every element of the claimed invention. See In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
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RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984). The law of
anticipation only requires that the claims on appeal "read on"
something disclosed in the prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983).
Here, it is not controverted that Gartner describes an
apparatus capable of removing an encapsulant from an encapsulated
integrated circuit, comprising a chamber having an optical
opening, a dispersion fluid inlet and an exhaust outlet, and a
laser mounted on the outside of the chamber in the claimed
manner. Compare the Answer and the final Office action dated
March 6, 2003 in their entirety with the Brief and the Reply
Brief in their entirety. With respect to independent claims 19
and 37, the appellant only argues that Gartner does not teach (1)
the functionally defined stage recited in claims 19 and 37; (2)
the “means for relatively moving the integrated circuit with
respect to the laser beam” recited in claim 19; and (3) the dust
bin recited in claim 37. See the Brief, pages 5-7. We are not
persuaded by these arguments.
First, as found by the examiner (the final Office action
dated March 6, 2003, page 3), Gartner teaches “a three-
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dimensionally controlled movable target plate” “which can be
rotated” and linearly moved. See column 7, lines 61 and 62 and
column 8, lines 57-62. According to Gartner, this target plate
can be moved in x-y direction and is capable of receiving and
supporting (holding) a stack of target materials. See column 10,
lines 42-51. Thus, it is reasonable for the examiner to conclude
that the stage recited in claims 19 and 37 encompasses the target
plate taught by Gartner. The burden is on the appellant to show
that the target plate taught by Gartner does not possess the
claimed function. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997), quoting In re Swinehart,
439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971)(“Where 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 characteristic relied on.”). However, on this
record, the appellant has not carried such burden.
Second, we find that Gartner teaches that the target plate
“is continuously moved on in a computer-controlled manner.” See
column 8, lines 30-31. Thus, we find that Gartner necessarily
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teaches a controller (computer) having a conventional structure
embraced by those corresponding to the moving means recited in
claim 19.
Finally, we note that claim 37, as written, does not specify
the structure and location of the claimed dust bin. Moreover, as
found by the examiner(the Answer, page 5), Gartner teaches a
deposition chamber for collecting ultrafine particles. See also
column 8, lines 7-12. That is, the deposition chamber taught by
Gartner provides the same or similar function as the claimed dust
bin, i.e., collecting ultrafine particles. Thus, it is
reasonable for the examiner to conclude that the claimed dust bin
embraces the chamber taught by Gartner. The appellant does not
refer to any claimed structural feature that would distinguish
the claimed dust bin from the chamber taught by Gartner.
With respect to claims 29, 31 and 33, the appellant
separately argues that Gartner does not teach the claimed
functionally defined laser. See the Brief, page 8. As found by
the examiner (the Answer, page 6), however, Gartner teaches the
same conventional laser, e.g., NdYAG laser, described at page 4,
lines 30-32, of the appellant’s specification. Thus, it is
reasonable to shift the burden to the appellant to show that the
lasers described in Gartner do not possess the claimed function.
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Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432. On this record,
the appellant again has not demonstrated that the conventional
NdYAG laser does not possess the claimed function.
In view of the reasons set forth above, and in the final
Office action dated March 6, 2003 and the Answer, we affirm the
examiner’s decision rejecting claims 19 through 33, 37, 40 and
42 through 44 under Section 102.
To establish obviousness under Section 103, the examiner
must demonstrate that the prior art references relied upon
provide some teaching, suggestion or incentive to arrive at the
claimed combination. ACS Hospital Systems, Inc. v. Montefiore
Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). This does not mean that the prior art references must
specifically suggest making the claimed combination. B.F.
Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,
1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)).
Rather, the test for obviousness is what the combined teachings
of the prior art references would have suggested to those of
ordinary skill in the art. In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
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413, 425, 208 USPQ 871, 881 (CCPA 1981). This test requires us
to take into account not only the specific teachings of the prior
art references, but also any inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
As evidence of obviousness of the subject matter defined by
claims 34 through 36, the examiner relies on the combined
teachings of Gartner and Somers. The examiner finds that Gartner
teaches the claimed subject matter, except for the shutter
recited in claim 34 and the end point detector recited in claims
35 and 36. To remedy these deficiencies in Gartner, the examiner
relies on the disclosure of Somers to show ”a shutter (column 4,
lines 16-49) for closing the optical opening during laser
operation and end point detection utilizing light frequency and
intensity reflection characteristics (column 2, lines 5[4]-65).”
See the final Office action, page 4.
Given that Gartner employs a laser through an optical
opening and teaches a need to control a laser intensity to
increase the absorptivity and the effectiveness of the laser
action (e.g., column 6, lines 3-25), we concur with the examiner
that one of ordinary skill in the art would have been led to
employ the shutter and the detector taught by Somers, motivated
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by a reasonable expectation of improving the operation of the
laser ablation system taught by Gartner.
In reaching this determination, we note the appellant’s
argument that the detector described by the Somers is not taught
to be used on a plastic resin encapsulated integrated circuit.
However, the examiner correctly points out that the manner in
which the claimed detector is intended to be employed does not
structurally distinguish it from the detector described by
Somers.
The appellant also argues that ”the present invention is
directed to solve a different problem than what the Gartner et al
reference is addressing...” See the Brief, page 10. It appears
to be the appellant’s position that Gartner is from a
nonanalogous art. Id. However, we concur with the examiner that
Gartner is analogous or relevant to the claimed subject matter
since it is directed to the same field of the appellant’s
endeavor, i.e., a laser ablation system.
Thus, having considered all of the evidence of record, we
determine that the preponderance of evidence weighs most heavily
in favor of obviousness. Hence, we concur with the examiner that
the claimed subject matter as a whole would have been obvious to
one of ordinary skill in the art in view of the applied prior art
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references. Accordingly, we affirm the examiner’s decision
rejecting claims 34 through 36 under 35 U.S.C. § 103.
As evidence of obviousness of the subject matter defined by
claim 41, the examiner relies on the combined teachings of
Gartner and Karlson. The examiner finds that Gartner teaches
essentially the subject mater defined by claim 41, except for the
claimed joy stick. To account for this deficiency, the examiner
relies on Karlson to show a laser control system in which a joy
stick is used to control “X and Y movement of the X-Y table”.
See column 5, lines 24-38.
Given that Gartner teaches a need to control the X and Y
movement of a target plate, we concur with the examiner that one
of ordinary skill in the art would have been led to employ the
joy stick taught by Karlson in the laser ablation system of
Gartner, motivated by a desire to improve the control of X and Y
movement of its target plate.
Thus, having considered all of the evidence of record, we
determine that the preponderance of evidence weighs most heavily
in favor of obviousness. Hence, we concur with the examiner that
the claimed subject matter as a whole would have been obvious to
one of ordinary skill in the art in view of the applied prior art
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references. Accordingly, we affirm the examiner’s decision
rejecting claim 41 under 35 U.S.C. § 103.
As evidence of obviousness of the subject matter defined by
claim 38, the examiner relies only on the disclosure of Gartner.
However, we find nothing in Gartner, which teaches placing the
claimed dust bin below the x-y table to receive particles falling
through the perforations therein. Thus, we reverse the
examiner’s decision rejecting claim 38 under Section 103.
CONCLUSION
In summary,
1) the examiner’s decision rejecting claims 19 through 33,
37, 40 and 42 through 44 under Section 102 is affirmed;
2) the examiner’s decision rejecting claims 34 through 36
and 41 under Section 103 is affirmed; and
3) the examiner’s decision rejecting claim 38 under Section
103 is reversed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CKP:hh
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SCOTT LUNDBERG
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