Ex Parte Starkston et al

Board of Patent Appeals and Interferences

Sep 4, 2009

10674960 (B.P.A.I. Sep. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT STARKSTON, ANDREW PROCTOR, and
STEVE TERRY
____________

Appeal 2009-001078
Application 10/674,960
Technology Center 3700
____________

Decided: September 4, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Robert Starkston et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 16-21, 23-27, and 29-38,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is a method and apparatus for laser
scribing wafers before singulating wafers to produce individual die or chips.
Spec. 1:7-8. During semiconductor manufacturing, a number of identical
element devices are formed on a single wafer, and then the water is sliced
and diced (i.e., singulated) with a diamond saw to produce individual wafer
portions known as die or chips. Spec. 1:14-30. The cut lines for slicing and
dicing a wafer are scribed using a laser prior to singulation to remove fragile
materials without leaving mechanical defects in the device edge. Spec. 1:27-
Spec. 2:5. Multiple parallel scribe lines are placed next to one another to
remove material which is wider than the kerf (i.e., width) of the diamond
saw blade. Spec. 2:6-10. When the laser scribe lines are placed one next to
the other, a plume from the laser scribing process can settle on the solder for
the leads to the circuitry within the die or chip, and may interfere with or
prevent electrical connection to the leads. Spec. 2:10-20. The Appellants’
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invention employs a method and apparatus to form the laser scribe lines in a
particular order. Independent claims 16, 23, 29, and 32 are reproduced
below.
16. A method for laser scribing a wafer
comprising:
laser scribing a first continuous line;
laser scribing a second continuous line
spaced apart from the first continuous line; and
laser scribing a third continuous line, the
third continuous line positioned between the first
continuous line and the second continuous line.

23. A method for singulating dies from a wafer
comprising:
laser scribing a first continuous line;
laser scribing a second continuous line
spaced apart from the first continuous line;
laser scribing a third continuous line, the
third continuous line positioned between the first
continuous line and the second continuous line;
and
passing a saw through the area of the first
continuous line, the second continues line and the
third continuous line to cut the wafer.

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29. An apparatus comprising:
a laser adapted to direct laser energy toward
a wafer;
a saw
a microprocessor for controlling the
direction of the laser energy and controlling the
movement of the saw;
a memory operatively coupled to the
microprocessor;
said memory including an instruction set to
cause a suitably programmed apparatus to laser
scribe a first continuous line on a wafer; and
laser scribe an area near the first continuous
line but not contacting the first continuous line.

32. A method for laser scribing a wafer
comprising:
laser treating a first area of the wafer;
laser treating a second area adjacent the first
area; and
laser scribing a third continuous line, the
third continuous line positioned between the first
area and the second area.

THE EVIDENCE
The Examiner relies upon the following evidence:
Manor US 6,420,245 B1 Jul. 16, 2002
Boyle US 6,586,707 B2 Jul. 1, 2003
Peng US 6,737,606 B2 May 18, 2004
Muraki JP 53-002074 A Jan. 10, 1978
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Katagiri JP 55-046579 A Apr. 1, 1980
Koizumi JP H11-284278 A Oct. 15, 1999

THE REJECTIONS
The Appellants seek review of the following rejections:
1. The Examiner rejected claims 29-31 under 35 U.S.C. § 102 as
anticipated by Koizumi or Manor or Peng.
2. The Examiner rejected claims 29-31 under 35 U.S.C. § 103(a) as
unpatentable over Koizumi or Manor or Peng.1
3. The Examiner rejected claims 16-21, 23-27, and 32-38 under 35
U.S.C. § 102(a) as anticipated by Katagiri or Muraki or Boyle.2
4. The Examiner rejected claims 16-21, 23-27, and 32-38 under 35
U.S.C. § 103(a) as unpatentable over Katagiri, Muraki, and Boyle.

1 The Examiner stated this rejection using the disjunctive “or” between the
listing of the references. As such, we understand this obviousness rejection
to be based on each reference separately and not based on the collective
teachings of all of the references.

2 The Examiner rejected these claims as anticipated by Katagiri in view of
Muraki and in view of Boyle. Since anticipation rejections are typically
based on a single reference, we understand the Examiner’s anticipation
rejection to be based on each reference separately; however, we interpret the
Examiner’s alternative rejection under § 103 to be based on the collective
teachings of the references due to the Examiner’s use of the “in view of”
language in the rejection.
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ISSUES
The Appellants argue claims 29-31 as a group. We select claim 29 as
the representative claim, and claims 30 and 31 stand or fall with claim 29.
37 C.F.R. § 41.37(c)(1)(vii) (2008). The Appellants contend the Examiner
erred in rejecting claim 29 because neither Koizumi, nor Manor, nor Peng
discloses or suggests the claimed memory that includes an instruction set to
cause a suitably programmed apparatus to “laser scribe a first continuous
line on a wafer; and laser scribe an area near the first continuous line but not
contacting the first continuous line.” App. Br. 10-11.
The first issue presented by this appeal is:
Have the Appellants shown the Examiner erred in finding that
Koizumi, Manor, or Peng discloses or renders obvious the memory,
including an instruction set, as called for in claim 29?
The Appellants argue claims 16-21 and 23-27 as a group. We select
claims 16 and 23 as representative claims, and their respective dependent
claims 17-21 and 24-27 stand or fall with claims 16 and 23. 37 C.F.R.
§ 41.37(c)(1)(vii). The Appellants contend the Examiner erred in rejecting
claims 16 and 23 because neither Katagiri, nor Muraki, nor Boyle teaches
laser scribing a third continuous line between the first and second lines.
App. Br. 13-16.
The Appellants argue claims 32-38 as a group. We select claim 32 as
the representative claim, and claims 33-38 stand or fall with claim 32.
37 C.F.R. § 41.37(c)(1)(vii). The Appellants contend the Examiner erred in
rejecting claim 32 because neither Katagiri, nor Muraki, nor Boyle teaches
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laser scribing a third continuous line between the first area and the second
area. App. Br. 14, 16.
The second issue presented by this appeal is:
Have the Appellants shown the Examiner erred in determining that
Katagiri, Muraki, and/or Boyle discloses or renders obvious laser scribing a
third continuous line between first and second lines, as recited in claims 16
and 23, or between first and second areas, as recited in claim 32?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Koizumi discloses a manufacturing device for laser diodes
obtaining a laser diode chip by making cleavages on bar-shaped
laser diodes. Koizumi 8, para. 0001. Koizumi does not explicitly
disclose that the manufacturing device is controlled by a
microprocessor having a memory with an instruction set.
Koizumi, passim.
2. Manor describes a method and apparatus for laser scribing
followed by mechanical dicing of semiconductor wafers. Manor,
col. 1, ll. 13-14. Manor does not explicitly disclose that the
apparatus is controlled by a microprocessor having a memory with
an instruction set. Manor, passim.
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3. Manor describes that “[l]aser energy sources, such as Excimer
(UV) laser sources, described in the prior art to process silicon
(U.S. Pat. No. 5,151,389 to Zappella, and U.S. Pat. No. 5,552,345
to Schrantz et al.) are examples of sources whose energy is readily
absorbed by silicon.” Manor, col. 4, ll. 43-48.
4. Manor discloses that “[i]n U.S. Pat. No. 4,716,270 to Gnanamuthu
et al. totally different physics [reflection versus absorption of the
laser energy] are used to differentiate between laser processing of
two layers of material.” Manor, col. 4, ll. 61-64.
5. Peng discloses a two-pass cutting procedure for processing wafers
in which a first pass is made by a laser to scribe the workpiece, and
a second pass is made by a mechanical cutter. Peng, col. 2,
ll. 64-66.
6. Peng discloses that the apparatus includes an actuator 455, which
includes stepper motors to control the position of table 452 on
which the workpiece rests, and a controller 480, which is
electrically connected to actuator 455, a laser 410, and a cutter 430,
to control and coordinate operation of each. Peng, col. 5, ll. 32-34
and 62-66.
7. Peng discloses that the controller 480 is a computer having a
processor and a memory, and that the memory stores data and
instructions that are used by the processor to produce control
signals for the devices connected to the controller. Peng, col. 5, l.
66 – col. 6, l. 3; id. at col. 9, ll. 40-46.
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8. Peng discloses a wafer 920 that includes a plurality of dies 926
integrally connected by saw streets 921. Peng, col. 8, ll. 28-29;
fig. 9. Peng discloses that the invention includes cutting wafer 920
using a laser 810 to remove material from a top portion of the
wafer to create a scribe that extends along saw streets 921, and
then completing each cut made by the scribe through the remaining
portion of the wafer using the mechanical cutter. Peng, col. 8, ll.
58-67. As shown in Figure 9, the saw streets 921 and thus the
corresponding scribe lines create a grid-like pattern across the
wafer. Peng, fig. 9.
9. Katagiri discloses that it was known in the art to dice
semiconductor wafers using a dicing saw or a blade scriber.
Katagiri 3. Katagiri does not disclose the process for laser scribing
lines on the wafers and does not disclose specifically the step of
laser scribing a third continuous line positioned between first and
second continuous lines. Katagiri, passim.
10. Muraki discloses that it was known in the art to scribe a silicon
wafer to form scribe grooves and then crack the wafer into
individual semiconductor devices along the scribe grooves using a
roller. Muraki 4. Muraki discloses forming two adjacent scribe
grooves and does not disclose or suggest forming a third scribe
groove positioned between the first and second scribe grooves.
Muraki, figs. 1-3.
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11. Boyle discloses control of laser machining for processing
semiconductor material, including machining by repeated scans so
that material is removed in a sequence of steps from the surface
downwards. Boyle, col. 1, ll. 5-8; id. at col. 2, ll. 9-12.
12. Figure 2 of Boyle shows an example of a cutting pattern for
creating a long through-hole channel, such as is used in a
microfluidic device, in the surface of a wafer using a combination
of rastering 10 and window 11 cutting 10. Boyle, col. 5, ll. 19-22;
fig. 2. As shown in Figure 2, the outer window is cut first,
followed by the inner window, and then the raster pattern is cut.
13. The topmost horizontal line in the outer window is a first laser-
scribed line, the bottommost horizontal line in the outer window is
a second laser-scribed line, and the topmost horizontal line in the
inner window is a third laser-scribed line positioned between the
first and second lines.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). To establish anticipation, every element and limitation
of the claimed invention must be found in a single prior art reference,
arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001). In other words, there must be no
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difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Rejections of Claims 29-31
Claim 29 calls for an apparatus including a microprocessor for
controlling the direction of the laser energy and controlling the movement of
the saw, and a memory operatively coupled to the microprocessor and
including an instruction set to cause a suitably programmed apparatus to
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laser scribe a first continuous line on a wafer and laser scribe an area near
the first continuous line, but not contacting the first continuous line.
We agree with the Appellants that neither Koizumi nor Manor
discloses a memory operatively coupled to a microprocessor and including
an instruction set as claimed. Neither Koizumi nor Manor explicitly
discloses a microprocessor-controlled apparatus for controlling operation of
a laser and a saw (Facts 1, 2). With respect to Manor, the Examiner found
that “[i]nstruction sets are program control features, and looking at USPN
6,420,245 to Manor et al, at least two of the cited references (US 5,151,389
and US 4,716,270) describe computer control.” Ans. 5. Manor mentions
these patents to describe prior art systems, and does not incorporate these
systems by reference or disclose that such systems could be used within the
apparatus disclosed in Manor (Facts 3, 4).
As such, Manor does not anticipate the claimed apparatus and the
Examiner has not articulated a reason with rational underpinning to explain
why a person having ordinary skill in the art would have been led by the
teachings of these two prior art patents to modify the apparatus of Manor to
make it microprocessor-controlled. Likewise, the Examiner has not
articulated a reason with a rational underpinning to explain why a person
having ordinary skill in the art would have been led to modify the apparatus
of Koizumi to result in the claimed apparatus. As such, we cannot sustain
the rejection of claims 29-31 as anticipated by, or obvious in view of,
Koizumi or Manor.
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As for Peng, however, we are not persuaded by the Appellants’
argument that Peng fails to teach a memory with the claimed instruction set.
Peng discloses a two-pass cutting procedure for processing wafers in which
a first pass is made by a laser to scribe the workpiece, and a second pass is
made by a mechanical cutter (Fact 5). Peng discloses that the apparatus
includes an actuator 455, which includes stepper motors to control the
position of table 452 on which the workpiece rests, and a controller 480,
which is electrically connected to actuator 455, a laser 410, and a cutter 430,
to control and coordinate operation of each (Fact 6). Peng discloses that the
controller 480 is a computer having a processor and a memory and that the
memory stores data and instructions that are used by the processor to
produce control signals for the devices connected to the controller (Fact 7).
Peng also discloses a wafer 920 that includes a plurality of dies 926
integrally connected by saw streets 921, that the wafer 920 is cut using a
laser to remove material from a top portion of the wafer to create a scribe
that extends along saw streets 921, and then completing each cut made by
the scribe through the remaining portion of the wafer using the mechanical
cutter (Fact 8). As shown in Figure 9, the saw streets 921, and thus the
corresponding scribe lines, create a grid-like pattern across the wafer
(Fact 8). Thus, Peng discloses a computer having a memory that includes an
instruction set for causing a laser to scribe a first continuous line on a wafer
(e.g., first scribe line along a first saw street 921) and to scribe an area near
the first continuous line but not contacting the first continuous line (e.g. a
second scribe line along a second saw street 921 running parallel to the first
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saw street 921). As such, we sustain the Examiner’s rejection of claims 29-
31 as being anticipated by Peng.
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). As such, we likewise
sustain the Examiner’s rejection of claims 29-31 as being unpatentable over
Peng.

Rejections of claims 16-21 and 23-27
Anticipation
We agree with the Appellants that neither Katagiri nor Muraki
discloses a method including laser scribing a third continuous line positioned
between a first continuous, laser-scribed line and a second continuous, laser-
scribed line.
Katagiri discloses that it was known in the art to dice semiconductor
wafers using a dicing saw or a blade scriber (Fact 9). Katagiri does not
disclose the process for laser scribing lines on the wafers and does not
disclose specifically the step of laser scribing a third continuous line
positioned between first and second continuous lines (Fact 9).
Muraki discloses that it was known in the art to scribe a silicon wafer
to form scribe grooves and then crack the wafer into individual
semiconductor devices along the scribe grooves using a roller (Fact 10).
Muraki discloses forming two adjacent scribe grooves and does not disclose
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or suggest forming a third scribe groove positioned between the first and
second scribe grooves (Fact 10).
As such, we cannot sustain the Examiner’s rejection of claims 16-21
and 23-27 as anticipated by Katagiri or Muraki.
Boyle, however, discloses control of laser machining for processing
semiconductor material, including machining by repeated scans so that
material is removed in a sequence of steps from the surface downwards
(Fact 11). Figure 2 of Boyle shows an example of a cutting pattern for
creating a long through-hole channel, such as is used in a microfluidic
device, in the surface of a wafer using a combination of rastering 10 and
window 11 cutting 10 (Fact 12). As shown in Figure 2, the outer window is
cut first, followed by the inner window and then the raster pattern is cut.
The topmost horizontal line in the outer window is a first laser-scribed line,
the bottommost horizontal line in the outer window is a second laser-scribed
line, and the topmost horizontal line in the inner window is a third laser-
scribed line positioned between the first and second lines (Fact 13).
As such, Boyle anticipates the method of claim 16 which calls for
laser scribing a first continuous line, laser scribing a second continuous line
spaced apart from the first continuous line, and laser scribing a third
continuous line positioned between the first and second lines.3

3 Claim 16 is not limited to completing the laser scribing steps in any
particular order. Even if claim 16 were so construed, we find that the arrows
representing the cutting pattern in Figure 2 of Boyle indicate that the
outermost lines in the first window would be laser scribed in advance of the
topmost horizontal line in the inner window (the third laser-scribed line).
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Claim 23 further recites passing a saw through the area of the first
continuous line, the second continuous line, and the third continuous line to
cut the wafer. The example pattern of Figure 2 is used to machine the
surface of a wafer used as a microfluidic device, and as such the wafer is not
cut with a saw. Boyle, col. 2, ll. 60-62. As such, we will not sustain the
rejection of claims 23-27 as anticipated by Boyle.

Obviousness
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). As we found supra, Boyle
anticipates claim 16. As such, we sustain the Examiner’s rejection of claims
16-21 as obvious over Katagiri, Muraki, and Boyle.
The Examiner has failed to articulate a reason with rational
underpinning as to why a person of ordinary skill in the art would have used
the cutting pattern of Figure 2 of Boyle to singulate a die in a wafer, as
called for in claim 23. As such, we will not sustain the Examiner’s rejection
of claims 23-27 as obvious over Katagiri, Muraki, and Boyle.

Rejections of claims 32-38
Anticipation
Claim 32 calls for a method for laser scribing a wafer that comprises
laser treating a first area of the wafer, laser treating a second area adjacent
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the first area, and laser scribing a third continuous line positioned between
the first and second areas. We construe the steps of laser treating an area of
the wafer to include laser scribing a line in a wafer, because the laser-scribed
line has a width and a length and thus defines an area. As such, for the same
reasons provided above in the analysis of claim 16, we find that neither
Katagiri nor Muraki discloses the step of laser scribing a third continuous
line positioned between first and second laser-treated areas (Facts 9, 10). As
such, we do not sustain the Examiner’s rejection of claims 32-38 as
anticipated by Katagiri or Muraki.
We further find, based on the same reasons provided above in the
analysis of claim 16, that Figure 2 of Boyle discloses the step of laser
scribing a third continuous line positioned between first and second laser-
treated areas of a wafer (Facts 11-13). As such, we sustain the Examiner’s
rejection of claims 32-38 as anticipated by Boyle.
Obviousness
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). As we found supra, Boyle
anticipates claim 32. As such, we sustain the Examiner’s rejection of claims
32-38 as obvious over Katagiri, Muraki, and Boyle.

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CONCLUSIONS
The Appellants have established that the Examiner erred in finding
that Koizumi or Manor disclose or render obvious an apparatus having a
memory including an instruction set, as called for in claim 29.
The Appellants have failed to show that the Examiner erred in finding
that Peng discloses or renders obvious an apparatus having a memory
including an instruction set, as called for in claim 29.
The Appellants have established that the Examiner erred in
determining that Katagiri or Muraki anticipate laser scribing a third
continuous line between first and second lines or first and second areas, as
called for in claims 16, 23, and 32.
The Appellants have failed to establish that the Examiner erred in
determining that Boyle discloses, or renders obvious in combination with
Katagiri and Muraki, laser scribing a third continuous line between first and
second lines, as recited in claim 16, or between first and second areas, as
recited in claim 32.
The Appellants have shown the Examiner erred in determining that
Boyle discloses, or renders obvious in combination with Katagiri and
Muraki, laser scribing a third continuous line positioned between first and
second continuous, laser-scribed lines, and passing a saw through the laser-
scribed lines, as recited in claim 23.

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DECISION
We affirm the Examiner’s decision to reject claims 16-21 and 29-38.
We reverse the Examiner’s decision to reject claims 23-27.

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)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

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P.O. BOX 2938
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