Ex Parte Diep

Patent Trial and Appeal Board

May 9, 2017

14513570 (P.T.A.B. May. 9, 2017)

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.
14/513,570 10/14/2014 Buu Q. Diep RTN-793ARE(10-1103-USREI) 1096
33164 7590 05/11/2017
RAYTHEON COMPANY
C/O DALY, CROWLEY, MOFFORD & DURKEE, LLP
354A TURNPIKE STREET
SUITE 301A
CANTON, MA 02021
EXAMINER
TILL, TERRENCE R
ART UNIT PAPER NUMBER
3991
NOTIFICATION DATE DELIVERY MODE
05/11/2017 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):
docketing@dc-m.com
amk@dc-m.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BUU Q. DIEP
Appeal 2017-002633
Application 14/513,5701
Patent 8,393,526 B2
Technology Center 3900
Before ALLEN R MacDONALD, KEN B. BARRETT, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 8—14, which are all of the claims pending in the present application.
The present application seeks to reissue U.S. Patent No. 8,393,526 B2 (“the
’526 patent”), which issued on March 12, 2013, from Application No.
13/273,881 (“the ’881 application”), filed on October 14, 2011. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to a method “to seal wafer level packaged
electronic devices using solder.” ’526 Patent at 1:13—16, Abstract.
1 Appellant states the real party in interest is Raytheon Co. App. Br. 2.
Appeal 2017-002633
Application 14/513,570
Patent 8,393,526 B2
Rejection
Reissue claims 8—14 stand rejected under 35 U.S.C. § 251 as being an
improper recapture of subject matter previously surrendered during
prosecution. Final Act. 2.
The Original, Issued, and Reissue Claims
Because the rejection is based on whether Appellant’s reissue claims
recapture subject matter surrendered during prosecution, we must consider
the claims before amendment (original claim 1), after amendment (issued
claim 1), and in reissue (reissue claim 8).
Original claim 1 as filed in the ’881 application on October 14, 2011,
is reproduced below:
1. A method for packaging electronic devices, comprising:
melting solder for a solder jet;
depositing the melted solder from the solder jet in a pattern
on a substrate of a first component of an electronic device, the
pattern comprising a plurality of individual dots of melted solder;
aligning a second component of the electronic device with
the pattern deposited on the first component of the electronic
device;
re-melting the solder deposited in the pattern on the first
component of the electronic device; and
while the solder is re-melting, compressing the first and
second components of the electronic device.
Appellant submitted an amendment to claim 1 on September 20, 2012.
Appellant concedes this amendment was made “to distinguish over the art.”
Reply Br. 4—5. Claim 1 as amended by Appellant is reproduced below with
additions underlined and deletions in double brackets:
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Application 14/513,570
Patent 8,393,526 B2
1. A method for wafer-level packaging of electronic devices,
comprising:
melting solder for a solder jet;
depositing the melted solder from the solder jet in a pattern
on a substrate of a first component of [[an]] a wafer level package
electronic device, the pattern comprising a plurality of individual
dots of melted solder;
aligning a second component of the electronic device with
the pattern deposited on the first component of the electronic
device;
re-melting the solder deposited in the pattern on the first
component of the electronic device; [[and]]
while the solder is re-melting, compressing the first and
second components of the electronic device wherein reflow of
the solder deposited in the pattern and bonding of the first and
second components occur simultaneously; and
depositing additional melted solder from the solder jet to
form columns of solder dots at three or more points on the
substrate of the first component for providing a vacuum
conductance gap between the first component of the electronic
device and the second component of the electronic device.
An Examiner’s amendment mailed on November 7, 2012, further
amended claim 1. Again, Appellant concedes this amendment was made “to
distinguish over the art.” Reply Br. 4—5. Claim 1 as amended by the
Examiner’s amendment is reproduced below with additional text underlined
and deleted text in double brackets. The Examiner’s amendment also moved
the “depositing additional melted solder” step (in italics below) from the end
of the claim to the middle.
1. A method for wafer_[[-]]level packaging of electronic devices,
comprising:
melting solder for a solder jet;
depositing the melted solder from the solder jet in a pattern
on a substrate of a first component of a wafer level package
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Application 14/513,570
Patent 8,393,526 B2
electronic device, the pattern comprising a plurality of individual
dots of melted solder;
depositing additional melted solder from the solder jet to
form columns of solder dots at three or more points on the
substrate of the first component for providing a vacuum
conductance gap between the first component of the electronic
device and the second component of the electronic device;
aligning a second component of the electronic device with
the pattern deposited on the first component of the electronic
device such that the second component is elevated from the first
component and a portion of the pattern by the columns of solder
formed with the additional melted solder;
re-melting the solder deposited in the pattern and in the
columns on the first component of the electronic device; and
while the solder is re-melting, compressing the first
component of the electronic device and the second
component[s]] of the electronic device wherein reflow of the
solder deposited in the columns and in the pattern and bonding
of the first and second components occur simultaneously to join
the second component to the portion of the pattern.
The ’526 patent issued on March 12, 2013, with issued claim 1 as set
forth in the Examiner’s amendment discussed above.
The only independent claim now sought on reissue is reissue claim 8,
which is reproduced below. According to Appellant, “[a]ll the subject
matter relating to additional solder and columns of solder [from issued
claim 1] has been removed from Reissue claim 8.” Reply Br. 5.
8. A method for wafer-level packaging of electronic devices,
comprising:
depositing individual solder drops on a first substrate in a
pattern to form drop gaps between the solder drops;
aligning a second substrate in relation to the first substrate
and the pattern of solder drops, wherein the first and second
substrates are substantially parallel such that there is a substrate
gap between the first and second substrates;
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Patent 8,393,526 B2
creating a vacuum in the substrate gap; and
heating the solder drops which are at least partially
unmelted until reflow commences,
wherein compression of the first and second substrates
reduces the substrate gap such that spaces provided by the drop
gaps enable pressure escape from the substrate gap during the
compression until the solder drops melt into a continuous band
that forms a hermetic seal in a region defined by the band of
solder and the first and second substrates.
ISSUE
Whether reissue claim 8 is directed to an “overlooked aspect” such
that the recapture rule does not bar reissue?
ANALYSIS
Under the reissue statute, “[wjhenever any patent is, through error
without any deceptive intention, deemed wholly or partly inoperative or
invalid ... by reason of the patentee claiming more or less than he had a
right to claim in the patent, the Director shall. . . reissue the patent” if the
patentee satisfies various conditions. 35 U.S.C. § 251 (pre-AIA). This
statute “balances the purpose of providing the patentee with an opportunity
to correct errors of inadequate claim scope, with the public interest in
finality and certainty of patent rights.” In re Graff, 111 F.3d 874, 877 (Fed.
Cir. 1997). One important restriction balancing these concerns is the
recapture rule.
“The recapture rule bars a patentee from recapturing subject matter,
through reissue, that the patentee intentionally surrendered during the
original prosecution in order to overcome prior art and obtain a valid
patent.” In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). “The
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rationale underlying the rule is that the cancellation or amendment of the
original claim in order to overcome prior art is a deliberate action that
necessarily excludes the inadvertence or mistake contemplated by the
statute’s error requirement.” Id.
“To determine whether the applicants’ reissue claims violate the
recapture rule, we apply a three-step recapture rule analysis.” Youman, 679
F.3d at 1343. As explained by the Federal Circuit,
(1) first, we determine whether, and in what respect, the reissue
claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue
claims relate to subject matter surrendered in the original
prosecution; and
(3) finally, we determine whether the reissue claims were
materially narrowed . . . and hence avoid the recapture rule.
N. Am. Container, Inc. v. PlastipakPackaging, Inc., 415 F.3d 1335, 1349
(Fed. Cir. 2005) (spacing added).
Appellant does not specifically address the steps in the recapture
analysis. Instead, Appellant argues, “Reissue claim 8 is directed to an
‘overlooked aspect’ of the invention” and therefore “35 USC 251 and the
Recapture doctrine do not present an obstacle to allowance.” App. Br. 8.
According to Appellant, “the subject matter added to achieve allowance of
the ‘526 patent has been removed [in the reissue claims] in favor of a
completely separate invention.” Id. at 11.
We are not persuaded that reissue claim 8 is addressed to
“overlooked” aspects. The Federal Circuit has said that “overlooked aspects
by definition were never claimed.” Youman, 679 F.3d at 1347; Ans. 140.
Yet all of the “overlooked” limitations identified by Appellant already exist
in substantially similar forms in the issued claims, as shown in the table
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below. Reply Br. 7 (emphasis modified); App. Br. 5—6, 10-11. Such
limitations therefore by definition were not “overlooked.”
Reissue Claim S Issued & Original Claims
“depositing individual solder
drops on a first substrate in a
pattern to form drop gaps
between the solder drops’ ’’
“depositing the melted solder ... in a
pattern comprising a plurality of gaps
between at least a portion of the plurality
of individual dots of melted solder”
(issued and original dependent claim 4)
“creating a vacuum in the
substrate gap’ ’
“providing a vacuum conductance gap
between the first component. . . and the
second component’ ’’
(issued claim 1, as added by amendment
on Sept. 2, 2012)
“heating the solder drops which
are at least partially unmelted
until reflow commences’ ’’
“re-melting the solder”
(issued and original claim 1)
“reflow of the solder”
(issued claim 1, as added by amendment
on Sept. 2, 2012)
compressing the two substrates
(i.e., components) such that
“spaces provided by the drop
gaps enable pressure escape
from the substrate gap during
the compression until the solder
drops melt into a continuous
band that forms a hermetic
sear
“hermetically sealing a gap between the
first component. . . and the second
component”
(issued dependent claim 5,
and original dependent claim 6)
Appellant also analogizes its application to the case of B.E. Meyers &
Co. v. United States, 47 Fed. Cl. 200 (2000). That case involved an original
claim with a pulsing circuit, an amendment to overcome prior art by
specifying how the pulsing circuit must operate, and a reissue claim that
deleted the pulsing circuit limitation entirely and instead focused on a lens
system. B.E. Meyers, 47 Fed. Cl. 206-07. However, Appellant’s assertion
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that “Meyers has not been overturned and must be applied” is misplaced.
App. Br. 8. First, B.E. Meyers is from the Court of Federal Claims and thus
is not binding. Appellant has not cited any instance of the Supreme Court,
Federal Circuit, or any other binding authority citing or approving B.E.
Meyers. Second, B.E. Meyers never used the phrase “overlooked aspect.”
Instead, the court applied the normal three-step recapture analysis. B.E.
Meyers, 47 Fed. Cl. at 206-07. The court appears to have found that under
step two of the recapture analysis, the broadening was not related to the
surrender. See id. at 207 (“The subject matter protected in the new
independent reissue claims dealt only with the lens system; it had nothing to
do with any type of pulsing circuitry [i.e., what was surrendered during
prosecution].”); see also MPEP § 1412.02(I)(B)(1) (once citing B.E. Meyers
as a “see also” in a section on step two). Thus, B.E. Meyers does not support
Appellant’s “overlooked aspect” argument. Third, given the Federal
Circuit’s intervening case law since B.E. Meyers was decided, it is not at all
clear that this court or even the Court of Federal Claims, let alone the
Federal Circuit or Supreme Court, would reach the same result today.
Finally, even in the best possible light, the court in B.E. Meyers considered
the very different technologies of a “pulsing circuitry” and a “lens system”
to be separate, unrelated inventions (47 Fed. Cl. at 207), whereas here we
agree with the Examiner that all of the claims (original, issued, and reissue)
relate to “different aspects of the same invention” of packaging electronic
devices by soldering two components together. Ans. Tflf 50, 47—48, 35.
Thus, the holding in B.E. Meyers is neither binding nor persuasive here.
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Appellant’s analogy to two examples in the MPEP are unpersuasive
for the same reasons. E.g., App. Br. 3—5; MPEP § 1412.02(I)(B)(1). As
discussed above, all of the claims (original, issued, and reissue) relate to the
same basic technology of packaging electronic devices by soldering two
components together. We also do not agree the new limitations in reissue
claim 8 would be mutually exclusive of the amended limitations in issued
claim 1 (e.g., columns of solder).
Appellant further argues that original claim 1 and reissue claim 8 are
“patentably distinguishable” and therefore necessarily a “separate invention”
not subject to the recapture rule. App. Br. 11; Reply Br. 5—7. However,
Appellant’s test (whether a reissue claim would have been patentable absent
the surrender) on its face ignores the surrender and is not the standard used
to determine recapture. Instead, consistent with Federal Circuit precedent,
we must apply the three-step analysis to determine if the recapture rule is
triggered.
Here, the first step is met because the claims are broader.
Specifically, Appellant concedes that “[djuring prosecution, Patent Owner
added ‘additional melted solder’ to ‘form columns’ where ‘the second
component is elevated from the first component.. .by the columns of solder’
to distinguish over the art.” Reply Br. 4—5. Appellant further concedes that
“[a]ll the subject matter relating to additional solder and columns of solder
[in issued claim 1] has been removed from Reissue claim 8.” Id. at 5; App.
Br. 11. Thus, for step 1, reissue claim 8 is broader than original claim 1 in
that limitations (e.g., columns of solder) have been entirely eliminated. Ans.
1110-12, 24.
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The second step asks whether the broader aspects of the reissue claims
relate to subject matter surrendered. “A reissue claim that deletes a
limitation or element from the patent claims is broader with respect to the
modified limitation.” In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir.
2011) (quotation omitted). Here, as discussed above, Appellant concedes
that limitations added to overcome the prior art were entirely eliminated
from reissue claim 8. Reply Br. 4—5; App. Br. 11. Therefore, the second
step is met. Ans. 13—14.
In the third step, we must determine whether the claims were
“materially narrowed.” Material narrowing must be considered “on a
limitation-by-limitation basis.” Youman, 679 F.3d at 1345. The inquiry in
the third step is whether any new limitation in the reissue claim “materially
narrows relative to the original claim such that surrendered subject matter is
not entirely or substantially recaptured.” Id. “Properly applied, the material
narrowing must relate to the surrendered subject matter to prevent the
recapture rule from applying.” Id. at 1347; Mostafazadeh, 643 F.3d at 1359
(“the narrowing must relate to the subject matter surrendered during the
original prosecution”). “If the narrowing is unrelated to the surrendered
subject matter, it is irrelevant for the purposes of the analysis even if it
renders the reissue claim as a whole intermediate in scope relative to the
patented and original claims.” Youman, 679 F.3d at 1347-48. Here, none of
the additional limitations identified by Appellant in reissue claim 8 (e.g., the
drop gaps, vacuum, reflow, and hermetic seal discussed above) relate to the
surrendered subject matter (e.g., columns of solder). To the contrary,
Appellant concedes that “[a]ll the subject matter relating to additional solder
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Patent 8,393,526 B2
and columns of solder has been removed from Reissue claim 8.” Reply Br.
5; App. Br. 11. Therefore, there is no “material narrowing” related to the
surrendered subject matter. Ans. 117. The recapture rule therefore
prohibits Appellant’s reissue claim 8.
Accordingly, we sustain the Examiner’s rejection of reissue claim 8,
and reissue claims 9—14, which Appellant does not argue separately. See 37
C.F.R. §41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
reissue claims 8—14.
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.
§ 41.50(f).
AFFIRMED
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