SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Dec 10, 2020

2019006958 (P.T.A.B. Dec. 10, 2020)

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.
15/395,181 12/30/2016 Darrell TRUHITTE ONS01731C01US 6251
132194 7590 12/10/2020
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
KEBEDE, BROOK
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
ipdocket@iptech.law
patents@onsemi.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DARRELL TRUHITTE

Appeal 2019-006958
Application 15/395,181
Technology Center 2800
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6–15. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Semiconductor Components Industries LLC. Appeal Br. 3.
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Application 15/395,181

2
Appellant’s invention is directed to a method of forming a plurality of
semiconductor packages that includes coating an etch mask on an array of
unsingulated semiconductor packages and plasma etching a plurality of
singulation lines in the array through the slits formed by the coated etch
mask (Claim 6). The use of plasma etching to singulate the semiconductor
packages is said to reduce the cost of molded array packages (MAP) (Spec.
¶ 52).
Claim 6 is representative of the subject matter on appeal:
6. A method of forming a plurality of semiconductor
packages, comprising:
providing an array of unsingulated semiconductor
packages coupled with one of a lead frame and a substrate and
at least partially encapsulated in an encapsulant;
coating an etch mask on the array, the etch mask having a
plurality of slits therein, and;
plasma etching a plurality of singulation lines in the array
through the plurality of slits, thereby singulating the array to
form a plurality of singulated semiconductor packages.
Appellant appeals the following rejection:
Claims 6–15 are rejected on the ground of nonstatutory double patenting as
unpatentable over claims 1–20 of U.S. Patent 9,559,007 B1 to Truhitte in
view of Barton (US 6,465,344 Bl issued Oct. 15, 2002) and Choi (US
2015/0079281 Al published Mar. 19, 2015).
Appellant argues the subject matter of independent claim 6 only
(Appeal Br. 8–13). Claims 7 to 15 will stand or fall with our analysis of the
rejection of claim 6.

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Application 15/395,181

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FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the nonstatutory
double patenting rejection are located on pages 3 to 7 of the Final Office
Action. Choi is cited to teach the spin coating method recited in dependent
claim 10. Appellant does not specifically contest Choi’s teachings or the
Examiner’s rejection based thereon (Appeal Br. generally). Accordingly,
we focus on the combination of Truhitte’s claims, as interpreted in light of
Truhitte’s disclosure, and Barton in this decision.
Appellant argues that “coupling” in Truhitte’s claim 6 differs from
“coating” in the application’s claim 6 (Appeal Br. 11). Appellant contends
the process of coupling differs from the process of coating (Appeal Br. 11).
Appellant argues that Truhitte’s coupling in claim 6 involves a separate
preexisting piece from an array which has the slits in it (Appeal Br. 12).
Appellant argues that coating in application claim 6 indicates that the etch
mask is actually formed on the array itself and never existed structurally
separate and apart from the structure of the array prior to the completion of
the coating step (Appeal Br. 12). Appellant contends that the etch mask
formed by coating cannot be coupled with the array as the mask does not
exist until the coating step is finished (Appeal Br. 12). Appellant argues that
Truhitte describes the coupling embodiment separately from the coating
embodiment (Appeal Br. 12). Appellant argues that Truhitte describes that
coupling embodiment as having a different structure than the coating
embodiment (Appeal Br. 12). Appellant contends that Truhitte’s coupling
embodiment uses rigid, preformed masks that are mechanically coupled to
the fixture (Appeal Br. 12). Appellant contends that in contrast Truhitte’s
coating embodiment includes a disclosure that the coated masks and
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Application 15/395,181

4
physically separate etch masks are different, non-identical versions of etch
masks that could be used in combination with each other (Appeal Br. 13).
Appellant contends that a coupled mask cannot do all the things a coated
mask could do, and vice versa (Appeal Br. 13). Appellant contends that the
coating method would not have been an obvious variant of Truhitte’s
coupled method (Appeal Br. 13).
Appellant’s arguments are directed to the construction of Truhitte’s
claim 6. We now construe that claim. In construing a patented claim in a
double patenting rejection, we are to review the portions of the patent that
are related to the specific claim. In re Vogel, 422 F.2d 438, 441–42 (CCPA
1970). The Examiner finds that Truhitte’s claim 6 is identical to the present
application’s claim 6, except that Truhitte’ claim 6 recites a coupling step,
whereas the application claim 6 recites a coating step (Final Act. 3–4).
Truhitte’s claim 6 recites, in relevant part, “coupling an etch mask with the
array, the etch mask having a plurality of slits therein.” Truhitte describes
coupling a first etch mask and second etch mask to the fixture (col. 2, ll. 25–
26; col. 4, ll. 56–57; col. 5, ll. 19–-28). Truhitte discloses the etch mask may
be made by coating (col. 7, ll. 49–52). Truhitte discloses that the etch mask
made by coating may be used in lieu of or in combination with the etching
fixture with one or more etch masks (col. 7, ll. 53–55, 58–61). Truhitte may
exemplify that preformed etching masks are coupled to the fixture and
coating masks are applied above one or more the packages. Id. However,
Truhitte does not define coupling an etch mask as excluding coating to
achieve the desired coupling. Coupling is defined by Merriam-Webster’s
Dictionary as “the act of bringing or coming together.” (Ans. 14 (emphasis
omitted)). Stated differently, Truhitte uses an etch mask in claim 6
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Application 15/395,181

5
regardless of how the etch mask is brought together (i.e., coupled) with the
array.
Appellant contends that a coated etch mask is not coupled until the
coating method is finished (Appeal Br. 12). Even if we accept Appellant’s
premise that a coated etch mask is not coupled until the process of coating
the etch mask is finished, that does not change the fact that the coated etch
mask is coupled to the array. The process claimed in Truhitte’s patent
requires coupling an etch mask. No time requirement is present in the claim
that would exclude a coating process that couples the etch mask to the array.
We are unpersuaded by Appellant’s arguments. We construe Truhitte’s
claim 6 as requiring an etch mask that is brought together with the array.
With this claim construction in mind, we determine that the Examiner
correctly finds that coupling in claim 6 is broader than coating and may
reasonably include coating to cause the coupling of the etch mask with the
array (Ans. 14). The Examiner further determines that Barton’s teaching
would have suggested coating a mask as an etch mask in Truhitte’s method
of claim 6 (Final Act. 6–7).
Appellant argues that Barton applies a coated mask to wet etch
partially a semiconductor wafer, but does not use plasma etching to singulate
semiconductor packages (Appeal Br. 9). Appellant argues that Barton uses
the coating as a protective film during wet etching but Barton does not
disclose plasma etching a plurality of singulation lines in array through a
plurality of slits in the mask (Appeal Br. 10). Appellant argues that Barton
would not have rendered obvious using a coated etch mask as the sole
mechanism to singulate a die (Appeal Br. 9–10).
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Application 15/395,181

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Appellant’s arguments are not persuasive because they attack Barton
alone, without addressing the combined teachings of Truhitte and Barton. In
particular, the Examiner correctly finds the teaching to singulate a
semiconductor package using a plasma is recited in Truhitte’s claim 6 (Ans.
12–13). Barton is relied upon to teach that the step of coupling an etch mask
may include coating an etch mask on Truhitte’s semiconductor package
array.
Appellant cites to Ex parte Ouk, Appeal No. 2017-009447 (PTAB
Sept. 25, 2018) to support their argument that the application claims are not
obvious over the Truhitte patent claims (Appeal Br. 11). That decision is not
precedential and we are not bound by its holdings. In any event, Appellant
distinguishes the facts in Ouk from the present facts (Appeal Br. 11). The
holding in Ouk has no bearing on our decision in this appeal.
On this record, we affirm the Examiner’s non-statutory double patent
rejection of claims 6–15 over Truhitte in view of Barton and Choi.
CONCLUSION
In summary:
Claims
Rejected
Basis Prior Art Affirmed Reversed
6–15 Non-
statutory
double
patenting
Truhitte,
Barton,
Choi
6–15
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED