Ex Parte Spitz et al

Patent Trial and Appeal Board

Feb 3, 2016

11794454 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111794,454 01/13/2009 Richard Spitz
26646 7590 02/05/2016
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
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.
1019115121 1155
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
2897
NOTIFICATION DATE DELIVERY MODE
02/05/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD SPITZ, ALFRED GOERLACH, and
FRIDERIKE HAHN
Appeal2014-003672
Application 11/794,454
Technology Center 2800
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 13-17, 19-21, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 1-12, 18, and 22 are canceled. See Preliminary Amendment
4 (June 29, 2007); Response to Non-Final Office Action 2-3 (Dec. 3, 2012);
see also Response to Final Office Action 3 (Mar. 5, 2013). Claims 24--26
are withdrawn. See Final Act. 2.
We affirm.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
App. Br. 1.
Appeal2014-003672
Application 11/794,454
STATEMENT OF THE CASE
The Invention
"The present invention relates to a method for manufacturing
semiconductor chips from a wafer .... " Spec. 1: 1-5. "[A]fter the wafer is
produced ... , rupture joints are created in the wafer surface ... and the
wafer is broken along the rupture joints to separate the semiconductor
chips." Spec. 2:9-14.
Claim 13 is independent and illustrative of the subject matter on
appeal:
13. A method for manufacturing semiconductor chips from a
wafer that includes a plurality of semiconductor chips,
compnsmg:
producing rupture joints in a surface of the wafer, wherein,
for each of at least some of the rupture joints:
the respective rupture joint is at a boundary between
semiconductor chips that each of at least one of which includes
a p-layer and an n-layer that meet each other at a depth from a
surface of the respective semiconductor chip;
the respective rupture joint does not reach the depth at
which the p-layer and then-layer meet; and
the respective rupture joint cuts into and exposes at least
one of the p-layer and then-layer; and
breaking the wafer along the rupture joints to separate the
semiconductor chips;
wherein an orientation of the rupture joints in relation to a
crystal structure of the wafer is selected such that the rupture
joints extend parallel to crystal surfaces that are easily broken.
App. Br. (Claims App'x) 1.
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Appeal2014-003672
Application 11/794,454
Rejections on Appeal
Claim 13 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Hiromi (JP 60055640 A; published Mar. 30, 1985)2 .3 See
Final Act. 2-3.
Claims 13-17, 19-21, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Goebel et al. (US 6,368,932 Bl; issued Apr. 9,
2002) ("Goebel") and Hiromi.4 See Final Act. 3-7.
ISSUES
The issues presented by Appellants' contentions are as follows:
Did the Examiner err in finding that the combination of Goebel and
Hiromi teaches or suggests "an orientation of the rupture joints in relation to
a crystal structure of the wafer is selected such that the rupture joints extend
parallel to crystal surfaces that are easily broken" as recited in claim 13?
Did the Examiner err in finding that Hiromi discloses "an orientation
of the rupture joints in relation to a crystal structure of the wafer is selected
2 Our reference to Hiromi is to the English translation of record, which was
mailed with the Notice of Reference cited, PT0-892, on Dec. 6, 2013.
3 The Examiner's statement of rejection in the final office action rejects
claim 1 under 35 U.S.C. § 102(b ), Final Act. 2; however claim 1 is canceled
as discussed above. See Preliminary Amendment 4 (June 29, 2007). In the
Appeal Brief, Appellants assume claim 13 was the subject of the rejection,
to which the Examiner agrees in the Answer. See App. Br. 2 n.2; Ans. 4.
Accordingly, we understand a rejection of claim 13 under 35 U.S.C. §
102(b) as anticipated by Hiromi to be before us on appeal.
4 The Examiner's summary statement of the rejection identifies the rejection
as being under § 102(b ), Final Act. 3; however the overall tenor of the
rejection is a rejection under§ 103(a), see Final Act. 3-7. We treat this
irregularity in the record as a typographical error.
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Application 11/794,454
such that the rupture joints extend parallel to crystal surfaces that are easily
broken" as recited in claim 13?
ANALYSIS
REJECTIONUNDER35 U.S.C. § 103(a)
Appellants contend neither Goebel nor Hiromi teaches or suggests "an
orientation of the rupture joints in relation to a crystal structure of the wafer
is selected such that the rupture joints extend parallel to crystal surfaces that
are easily broken" as recited in claim 13. See App. Br. 3--4; Reply Br. 2-3.
In particular, Appellants argue that neither Goebel nor Hiromi teach or
suggest "that rupture joints may be advantageously aligned with [the] crystal
orientation of the semiconductor." App. Br. 3.
The Examiner finds Hiromi teaches a splitting method that utilizes the
cleavage of a crystal to split the semiconductor, "meaning the semiconductor
must be cutting [sic] along the cleavage plane or the surface parallel to cubic
crystalline side surfaces as ... is known in the art." Ans. 7-8 (citing Hiromi
3, 11. 21-23). The Examiner further finds "the objective of [Hiromi] is to
provide a method for splitting a compound semiconductor substrate, which
can obtain elements whose end surfaces are appropriately perpendicular,
without generating burrs or losses and irregularly splitting the substrate
during handling." Ans. 8 (quoting Hiromi 5, 11. 8-12).
We agree with the Examiner that Hiromi suggests the disputed
limitation. Consistent with the Examiner findings, Hiromi forms cutting
grooves on its semiconductor substrate, which create a cleavage along which
the surface of the crystal is split. See Hiromi 6, 11. 12-14; Fig. 2(e); Ans. 4--
5. Hiromi uses the cleavage as a guide to split the crystal of a
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Application 11/794,454
semiconductor substrate into elements having perpendicular end surfaces.
See Ans. 7-8; Hiromi 3, 11. 21-23; 5, 11. 8-12. We find that Hiromi's
achievement of appropriately perpendicular end surfaces based on its split
using the cleavage would suggest to one of ordinary skill in the art an
advantageous, parallel orientation of the cleavage in relation to the cleavage
planes defined by the crystal structure. See Ans. 7-8; Hiromi 3:21-23; Figs.
2(e}-(t); accord Goebel Fig. 2f; col. 2, 11. 50-58 (disclosing the introduction
of trenches into the upper side of wafers, as a result of which partition lines
are defined along which the wafer is later divided into individual chips).
Therefore, we agree with the Examiner that the combination of
Goebel and Hiromi suggests "an orientation of the rupture joints in relation
to a crystal structure of the wafer is selected such that the rupture joints
extend parallel to crystal surfaces that are easily broken." See Ans. 7-8. In
view of the foregoing, we also agree with the Examiner that he did not
employ improper hindsight. See Ans. 8; In re McLaughlin, 443 F.2d 1392,
1395.
Accordingly, we sustain the rejection under 35 U.S.C. § 103 of
independent claim 13, as well dependent claims 14--17, 19-21, and 23,
which were not argued separately with particularity beyond the arguments
advanced for claim 13. See App. Br. 3--4; Reply Br. 2--4; App. Br. (Claims
App'x) 1-2.
REJECTION UNDER 35 U.S.C. § 102(b)
Because we sustain the Examiner's rejection of claim 13 under 35
U.S.C. § 103, we need not address the cumulative rejection of claim 13
under 35 U.S.C. § 102(b) as anticipated by Hiromi. See 37 C.F.R. § 41.77(a)
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Application 11/794,454
(2012) ("The atlirmance of the rejection of a claim on any of the grounds
specified constitutes a general affirmance of the decision of the examiner on
that claim, except as to any ground specifically reversed."); cf In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (holding that obviousness rejections
need not be reached upon affirming a rejection of all claims as anticipated);
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having
decided a single dispositive issue, the ITC was not required to review other
matters decided by the presiding officer).
DECISION
The decision of the Examiner to reject claims 13-17, 19-21, and 23 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)(l ).
See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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