Ex Parte Kroener et alDownload PDFPatent Trial and Appeal BoardNov 30, 201814023577 (P.T.A.B. Nov. 30, 2018) Copy Citation 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. 1 Appeal2018-001040 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. 2 Appeal2018-001040 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. 3 Appeal2018-001040 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 4 Appeal2018-001040 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. 5 Appeal2018-001040 Application 14/023,577 DECISION Each rejection is reversed. ORDER REVERSED 6 Copy with citationCopy as parenthetical citation