2020006395 (P.T.A.B. Jul. 28, 2021)

Rohinni, LLC

Patent Trials and Appeals BoardJul 28, 2021

2020006395 (P.T.A.B. Jul. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 16/381,982 04/11/2019 Andrew Huska R088-0018USC15 5393 134698 7590 07/28/2021 Lee & Hayes P.C. 601 W Riverside Avenue Suite 1400 Spokane, WA 99201 EXAMINER CHEN, XIAOLIANG ART UNIT PAPER NUMBER 2848 NOTIFICATION DATE DELIVERY MODE 07/28/2021 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): LHPTO@leehayes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW HUSKA, CODY PETERSON, CLINTON ADAMS, and SEAN KUPCOW Appeal 2020-006395 Application 16/381,982 Technology Center 2800 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1–5, 8, and 9 which are all claims pending in the application.2 Claim 6 is cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Rohinni, LLC. Appeal Br. 3. 2 Claim 7 is objected to and indicated as being allowable if rewritten in independent form. Final Act. 6–7. Appeal 2020-006395 Application 16/381,982 2 STATEMENT OF THE CASE3 The claimed subject matter is directed to methods for improved transfer of semiconductor die. See Spec. (Title). More particularly, the disclosed and claimed embodiments are directed to “a machine that directly transfers and affixes semiconductor device die to a circuit and to the process for achieving the same, as well as to the circuit having die affixed thereto (as the output product).” Spec. ¶ 24. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphases and formatting added to contested limitations): l. A method of effectuating improved transfer of a semiconductor die from a wafer tape, the method comprising: positioning the wafer tape having the semiconductor die thereon, the semiconductor die being disposed on a first side of the wafer tape; positioning a substrate adjacent to the wafer tape; selecting, based, at least in part, on one or more characteristics of the semiconductor die, a needle to transfer the semiconductor die; selecting, based, at least in part, on the one or more characteristics of the semiconductor die, a gap distance between the substrate and a bottom surface of the semiconductor die, and the bottom surface of the semiconductor die being opposite a top surface of the semiconductor die adhered to the wafer tape; 3 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed July 27, 2020); Reply Brief (“Reply Br.,” filed Sept. 11, 2020); Examiner’s Answer (“Ans.,” mailed Aug. 21, 2020); Final Office Action (“Final Act.,” mailed May 13, 2020); and the original Specification (“Spec.,” filed April 11, 2019). Appeal 2020-006395 Application 16/381,982 3 positioning, based, at least in part, on the gap distance, an end of the needle adjacent to a second surface of the wafer tape; and transferring, via actuation of the needle, the semiconductor die onto the substrate. REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Wang et al. (“Wang”) US 2008/0060750 A1 Mar. 13, 2008 REJECTION Claims 1–5, 8, and 9 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Wang. Final Act. 3. ISSUE Appellant argues (Appeal Br. 8–9; Reply Br. 2–6) the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Wang is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses a method that includes, inter alia, the steps of: (a) selecting, based, at least in part, on one or more characteristics of the semiconductor die, a needle to transfer the semiconductor die; (b) selecting, based, at least in part, on the one or more characteristics of the semiconductor die, a gap distance between the substrate and a bottom surface of the semiconductor die, and the bottom surface of the semiconductor die being opposite a top surface of the semiconductor die adhered to the wafer tape; [and] Appeal 2020-006395 Application 16/381,982 4 (c) positioning, based, at least in part, on the gap distance, an end of the needle adjacent to a second surface of the wafer tape, as recited in claim 1? PRINCIPLES OF LAW Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed element and the claimed arrangement or combination of those elements is disclosed, inherently or expressly, by a single prior art reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it 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). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description Appeal 2020-006395 Application 16/381,982 5 contained in the applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). ANALYSIS Appellant argues Wang does not disclose the disputed limitation “selecting, based, at least in part, on one or more characteristics of the semiconductor die, a needle to transfer the semiconductor die” as recited in claim 1, and specifically contends Wang is completely silent regarding this disputed limitation. Appeal Br. 8. Appellant argues “No characteristics, features, or parameters of the chips are discussed with respect to the claimed feature of ‘selecting . . . a needle to transfer the semiconductor die.’” Id. The Examiner finds Wang’s pins disclose Appellant’s claimed “needle” as recited in claim 1. Final Act. 4. The Examiner further finds Wang’s Figures 4–7 and associated descriptions disclose selecting a needle based on the type, material, size, and thickness of the die. Final Act. 4. We note, however, Wang only appears to disclose that these pins are selected to be of a suitable length to allow the penetrable carrier 250 to move along the shafts of the plurality of pins 452 to a non-contact position, but does not appear to disclose pin selection based upon characteristics of the semiconductor die. Wang ¶ 43. Although the theory of inherency is not specifically stated as being relied upon by the Examiner, the Examiner’s analysis appears to rely upon inherency of the teachings of Wang with regard to the selection of the needle, and that Wang inherently discloses the disputed limitation because: a) the size (or diameter) of the needle must be selected not larger than the size of the die, otherwise the larger sized needle may push on two adjacent dies at the same time mistakenly; Appeal 2020-006395 Application 16/381,982 6 b) the material of needle and the shape of needle tip must be selected according to the material of the die, if the tip of the needle is too sharp, it would cut into and damage the die, or damage the needle tip itself, and c) the needle must be selected with a certain length and a traveling distance according to the thickness of the die, and gap between the die 208a and the substrate 302, otherwise the die would not stick to contacts 306 on the substrate 302 properly. Ans. 3–4. In response to the Examiner’s finding that Wang inherently discloses the disputed limitation, Appellant argues the Examiner’s findings “are utterly untethered to any language in Wang.” Reply Br. 3. Appellant argues there is no disclosure in Wang that Wang’s pins are selected “based, at least in part, on one or more characteristics of the semiconductor die.” Reply Br. 4. Regarding the second disputed limitation on selecting the “gap distance,” Appellant argues Figure 4 does not even illustrate “a gap distance . . . ,” and furthermore that Wang does not disclose “this gap distance is selected according to any criteria, let alone the cited criteria.” Id. Appellant contends “[s]imply having a gap distance does not disclose that the gap distance was selected.” Reply Br. 5. We note Appellant’s Specification provides a non-limiting selection of the claimed needle’s width based on a characteristic of the die — “The needle may be sized so as to be no wider than a width of the die being transferred. Although in other instances, the width of the needle may [be] [sic] wider, or any other dimension.” See Spec. ¶ 29, as referenced in “Summary of the Subject Matter of Independent Claim 1,” Appeal Br. 5. Our reviewing court provides, “[i]t is well settled that a prior art reference may anticipate when the claim limitations not expressly found in Appeal 2020-006395 Application 16/381,982 7 that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977); see also Crown Operations Int'l, LTD v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this “burden of production by ‘adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” Best, 562 F.2d at 1254–55; In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency). We find the Examiner has met the burden of production by the findings in the Answer cited above (Ans. 3–4), such that the burden of proof has properly shifted to Appellant to rebut the Examiner’s findings concerning the inherent nature of Wang’s selecting a pin to transfer the Appeal 2020-006395 Application 16/381,982 8 semiconductor die based, at least in part, on one or more characteristics of the semiconductor die, in addition to the other two disputed limitations.4 However, we also find Appellant has provided sufficient rebuttal evidence to persuade us of reversible error in the Examiner’s reading of the disputed limitations on Wang. Appellant argues in the Reply Brief that Wang is “completely silent” and does not disclose any of the three disputed limitations “selecting [a needle or a gap distance], based, at least in part, on the one or more characteristics of the semiconductor die,” nor “positioning, based, at least in part, on the gap distance, an end of the needle . . . ,” as recited in claim 1. Reply Br. 2–6. Appellant expands the arguments by providing rebuttal evidence from the reference disclosure. Id. Thus, Appellant presents a persuasive challenge to the Examiner’s finding of inherency. We agree with Appellant’s arguments. “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., 814 F.2d 628, 631 (Fed. Cir. 1987). As our reviewing court has instructed, “[u]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the 4 “[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. As the statute itself instructs, the examiner must ‘notify the applicant,’ “stating the reasons for such rejection, ‘together with such information and references as may be useful in judging the propriety of continuing prosecution of his application.’” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Appeal 2020-006395 Application 16/381,982 9 limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). Significantly, an inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Here, Appellant rebuts the Examiner’s findings of inherency by arguing that these findings are not based on any cited evidence. Reply Br. 2–6. To the extent the Examiner asserts the claimed limitations are inherent in Wang, we conclude the Examiner makes insufficient findings in the record before us to support a determination of inherency. “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). Here, the Examiner finds each of the three disputed limitations are inherently disclosed (Ans. 3–4, the size of the needle “must be selected” not larger than the size of the die, . . . “must be selected according to the material of the die”), but these findings, standing alone, do not support a determination that the claimed limitations are inherent, and thus necessarily present in Wang. Appeal 2020-006395 Application 16/381,982 10 Accordingly, we reverse the Examiner’s anticipation rejection of independent claim 1 and claims 2–5, 8, and 9 that depend therefrom.5 CONCLUSION We reverse the Examiner’s rejection of claims 1–5, 8, and 9. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8, 9 102(a)(1) Wang 1–5, 8, 9 REVERSED 5 Because a rejection under § 103 for independent claim 1 is not before us on appeal, we do not reach and express no opinion as to whether claim 1 might be obvious over the teachings and suggestions of the Wang reference, considered alone, or in combination with one or more additional references. In the event of further prosecution of this application, including any review prior to allowance, we leave such further consideration to the discretion of the Examiner. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.