Ex Parte Kroener et al

Patent Trial and Appeal Board

Nov 30, 2018

14023577 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/023,577 09/11/2013
81722 7590 12/04/2018
Viering, Jentschura & Partner mbB - Inf
c/o
444 Brickell A venue
Suite 51270
Miami, FL 33131
FIRST NAMED INVENTOR
Friedrich Kroener
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P53015US 7361
EXAMINER
THOMAS, CIEL P
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)
Appeal2018-001040
Application 14/023,577
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRIEDRICH KROENER and INGO MURI 1
Appeal2018-001040
Application 14/023,577
Technology Center 1700
Before BEYERL YA. FRANKLIN, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1---6 and 9--22. 2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
1 Appellants identify the real party in interest as Infineon Technologies AG.
App. Br. 3.
2 Appellants identify the claims on appeal as limited to independent claims
1 and 14 (App. Br. 5), however, "[a]n appeal, when taken, is presumed to be
taken from the rejection of all claims under rejection unless cancelled by
amendment and entered by the Office." 3 7 C.F .R. §41.31 ( c ). Moreover, all
pending claims subject to examination are reproduced in the Claims
Appendix. App. Br. 19--22.
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Application 14/023,577
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A wafer contacting device, comprising:
a receiving region configured to receive a wafer;
an elastically deformable carrier disposed in the receiving
region and comprising an electrically conductive surface
region; and
a retainer configured to retain the wafer in the receiving
reg10n,
wherein the electrically conductive surface region of the
carrier is configured to electrically contact a first side of the
wafer, and
wherein the retainer comprises a contacting structure
configured to electrically contact a second side of the wafer that
is opposite the first side.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Shaw us 3,560,357 Feb.2, 1971
Hirata us 4,664,762 May 12, 1987
Tanabe us 5,855,998 Jan. 5, 1999
Fredenberg US 2011/0278162 Al Nov. 17, 2011
Keigler US 2012/0305404 Al Dec. 6, 2012
THE REJECTIONS
1. Claims 1, 2, 4---6, 9--14, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Keigler in view of Hirata and further in view of
Fredenberg.
2. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Keigler, Hirata and Fredenberg, and further in view of
Tannabe.
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Application 14/023,577
3. Claims 15, 16, 17, 19, 20, 21, and 22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Keigler, Hirata and
Fredenberg, and further in view of Shaw.
4. Claims 1, 2, 4---6, 9--14, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Keigler in view of Fredenberg.
5. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Keigler and Fredenberg, and further in view of Tannabe.
6. Claims 15, 16, 17, 19, 20, 21, and 22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Keigler and
Fredenberg, and further in view of Shaw.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal (including the Examiner's Answer, the Appeal
Brief, and the Reply Brief), we are persuaded that Appellants identify
reversible error. Thus, we reverse the Examiner's rejections and add the
following primarily for emphasis. We can focus on the combination of
Keigler in view of Hirata (Rejections 1-3) and the combination of Keigler in
view of Fredenberg (Rejections 4--6) in making our determinations below.
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Application 14/023,577
Rejections 1-3
Appellants argue that it would not have been obvious to modify
Keigler with Hirata. Appellants argue that the "so-called simple and
selective etching" method of Hirata is not possible using the workpiece
holder of Keigler which is instead purposely designed to allow for only a
single wafer surface to be exposed to the etchant/electrolyte. Thus appearing
to argue that the advantages of both side electrical connection of Hirata
would not be possible utilizing the holder means of Keigler. However,
the Examiner disagrees.
The Examiner states that Keigler teaches a holder (18') that exposes
only one side of a wafer for, for example, etching or electroplating, with an
electrical contact (via ring 42') made to the surface to be
plated/etched/exposed to the electrolyte (Keigler Paragraph 0079 and 0082;
Figure 5).
The Examiner explains that Hirata also discusses electrolytic etching
and teaches electrical contact with a side not to be etched and a side to be
etched, in order to control the etching rate simply and effectively (Hirata
Column 2, Lines 7-60; Figures IA, 2 and 3).
The Examiner explains that while Hirata does show a submersed
substrate and not a substrate held with only the side to be etched exposed
to the electrolyte, Hirata very specifically teaches that only one side is to be
etched and that the other side is covered with an oxide layer ( 11) in order to
protect it from etching (Hirata, Figure IB).
As such the Examiner maintains that Hirata's teachings are applicable
to one sided plating, regardless of by which means the substrate's other side
is protected from reaction, be it an oxide covering as in Hirata, a holder as in
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Application 14/023,577
Keigler, or another protection means, thus rendering obvious the addition of
a second electrical contact means to the non-etched or plated/holder facing
side of the apparatus of Keigler as taught by Hirata in order to simply and
effectively control the etching rate.
However, as Appellants argue, Keigler already etches only one side of
wafer, and therefore implementation of the etching technique of Hirata into
the process of Keigler provides no benefit. Reply Br. 7-8. In other words,
there is no apparent reason in making the proposed modification. We note
that setting forth a prima facie case of obviousness requires establishing that
the applied prior art would have provided one of ordinary skill in the art with
an apparent reason to modify the prior art to arrive at the claimed invention.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). We thus agree
with Appellants that the modification is premised on hindsight rather than on
a supported reason to modify available to the skilled artisan and consistent
with teachings thereof. Reply Br. 8
In view of the above, we reverse Rejections 1-3.
Rejections 4--6
In a similar manner, the Examiner proposes to modify Keigler
according to Fredenberg by implementing the etching technique of
Fredenberg into the process of Keigler. Ans. 4--5.
Appellants again argue that such implementation provides no benefit
to the process ofKeigler, and is premised on hindsight. Appeal Br. 13-17.
Reply Br. 5-8. We agree that there is no apparent reason in making the
proposed modification for the reasons provided by Appellants in the record,
and reverse Rejections 4--6.
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Application 14/023,577
DECISION
Each rejection is reversed.
ORDER
REVERSED
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