Ex Parte Thallner

Patent Trial and Appeal Board

Feb 13, 2013

11078136 (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/078,136 03/11/2005 Erich Thallner BE9088US 9601
22203 7590 02/14/2013
KUSNER & JAFFE
Paragon Center II
6150 Parkland Boulevard
Suite 105
Mayfield Heights, OH 44124
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
02/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERICH THALLNER
____________

Appeal 2011-012387
Application 11/078,136
Technology Center
____________

Before BRADLEY R. GARRIS, RICHARD E. SCHAFER, and
RICHARD TORCZON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 10-16 as unpatentable over
Kobayashi (EP 1,381,076 A2, issued Jan. 14, 2004) in view of Saito et al.
(JP 2004-025438, published Jan. 29, 2004; as translated) and of claim 17 as
unpatentable over Kobayashi in view of Sohn et al. (US 2003/0101930,
published Jun. 5, 2003). We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims a method for the application of a contact area of a
sheet-like jointing element onto a contact area of a wafer wherein a single
detection device detects the position of the contact area of the wafer and the
Appeal 2011-012387
Application 11/078,136

2
position of the contact area of the sheet-like jointing element (independent
claims 10 and 17).
Representative claims 10 and 17, the sole independent claims on
appeal, read as follows:
10. A method for the application of a contact area of a sheet-like
jointing element onto a contact area of a wafer, wherein the contact area of
the sheet-like jointing element is first brought essentially to the size of the
contact area of the wafer, and a single detection device detects the position
of the contact area of the wafer at a predetermined location and the position
of the contact area of the sheet-like jointing element at the predetermined
location to align the contact area of the sheet-like jointing element with the
contact area of the wafer and the contact areas are brought exclusively into
contact by means of a first device for receiving and, as necessary, moving
the sheet-like jointing element and a second device for receiving and, as
necessary, moving the wafer and said single detection device, whereby the
course of the method is controlled by a control unit which is connected via
active connections to the first and second device and to the single detection
device.

17. A method for the application of a contact area of a sheet-like
jointing element onto a contact area of a wafer, said method comprising the
steps of:
sizing a contact area from a sheet-like jointing element to correspond
essentially to a size of a contact area of a wafer;
positioning said contact area of said sheet-like jointing element at a
predetermined location;
detecting the position of said contact area of said sheet-like jointing
element at said predetermined location with a single detection device;
moving a wafer to said predetermined location;
detecting the position of said wafer at said predetermined location
with said single detection device that detected the position of the contact
area of said sheet-like jointing element at said predetermined location;
adjusting the relative position of said contact area of said sheet-like
jointing element and said wafer to align said contact area of said sheet-like
jointing element with a contact area of said wafer; and
Appeal 2011-012387
Application 11/078,136

3
moving said contact area of said sheet-like element exclusively into
contact with said contact area of said wafer.

Appellant argues that each of the applied references requires at least
two detection devices and correspondingly that the Examiner's combinations
of Kobayashi with Saito and Kobayashi with Sohn do not teach or suggest a
single detection device which detects the contact area positions of both the
wafer and the sheet-like jointing element as required by independent claims
10 and 17 (see, e.g., App. Br. 23 and 29).
In response, the Examiner finds that "the Kobayashi reference
teach[es] a single detection device (aligner 23 or edge detector 44) that
detects the position of the contact area of the wafer at a predetermined
location and the position of the contact area of the sheet[-]like jointing
element (by detecting the notch of the wafer and adjusting the wafer)" (Ans.
para. bridging 8-9, see also para. bridging 9-10). According to the
Examiner, the presence of additional sensors in Kobayashi (i.e., aligner 23 or
detector 44) or in the respective secondary references of Saito and Sohn "to
do other things does not change the fact that one sensor performs this
alignment and detection step" (id.).
The Examiner's above finding is erroneous. Kobayashi's aligner 23 is
for detecting and aligning the wafer (para. [0028]) whereas edge detector 44
is for detecting and aligning the dicing tape (i.e., the sheet-like jointing
element) (para. [0031]) after the wafer has been adjusted by aligner 23 (para.
[0030]). The Examiner fails to identify any disclosure in Kobayashi which
teaches or suggests using a single one of either aligner 23 or detector 44 for
detecting the contact area positions of both the wafer and the dicing tape
Appeal 2011-012387
Application 11/078,136

4
(i.e., the sheet-like jointing element). In short, for the reasons correctly and
more fully explained by Appellant in the Appeal and Reply Briefs, the
Examiner does not cite to any disclosure in either Kobayashi or the
secondary references of Saito and Sohn which teaches or suggests detecting
the contact area positions of both the wafer and the sheet-like jointing
element with a single detection device as required by independent claims 10
and 17.
It follows that neither of the above § 103 rejections will be sustained.
The decision of the Examiner is reversed.
REVERSED

cam