Ex Parte Pagani

Patent Trial and Appeal BoardMar 11, 2019

14948569 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/948,569 11/23/2015 Alberto Pagani 117381 7590 03/13/2019 CROWE & DUNLEVY - ST-EP INTELLECTUAL PROPERTY SECTION - DALLAS 1919 MCKINNEY A VENUE SUITE 100 DALLAS, TX 75201 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. 10AG025US02/50650-0l 102 6529 EXAMINER YUSHINA, GALINA G ART UNIT PAPER NUMBER 2811 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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): IPDAL@crowedunlevy.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBER TO PA GANI Appeal2018-003275 Application 14/948,569 1 Technology Center 2800 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and GEORGIANNA W. BRADEN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1--4, 8-13, 18, 19, 22 and 23. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 The Appellant and the real party in interest is STMicroelectronics, S.r.l. See App. Br. 2. 2 The Examiner has indicated that the subject matter of claims 5-7, 14, 16, 20 and 21 have been withdrawn from consideration. Final Act. 1. Appeal2018-003275 Application 14/948,569 The appealed invention relates to a method of producing traceable integrated circuits that includes forming on each integrated circuit at least one marker on a portion of a seal ring around each functional region on a wafer of semiconductor material that is visible external to the integrated circuit (Spec. ,r 12). Independent claim 1 is representative of the appealed subject matter and is reproduced below: 1. A method, comprising: forming, on a wafer of semiconductor material including a plurality of die locations, a functional region at each die location for implementing specific functionalities of an integrated circuit; forming a seal ring around each functional region, and forming in a top surface of each seal ring at least one marker that provides die information for the die location; and wherein forming the at least one marker comprises forming a plurality of grooves in a top portion of the seal ring with each groove of said plurality of grooves positioned in between and away from an inner perimeter edge and outer perimeter edge of the seal ring. Claims Appendix to App. Br. Appellant (see App. Br., generally) requests review of the following rejections under 35 USC Â§103(a): 3 Claims 1, 2 and 8 rejected over the combination of Takagi (JP 10- 012527) 4 and Duncan (US 4,585,931); Claims 3, 11-13, 18 and 19 3 The Examiner has withdrawn the rejections under 35 U.S.C. Â§ 112, second paragraph (Ans. 2). 4 We refer to the machine translation that has been made of record. 2 Appeal2018-003275 Application 14/948,569 rejected over the combination of Takagi, Duncan and Chen (US 2006/0244133 Al); Claim 4 rejected over the combination of Takagi, Duncan, Chen and Kawano (US 2002/0090793 Al); Claim 9 rejected over the combination of Takagi, Duncan, Hampton (US 4,794,238) and Hsu (US 5,705,320); Claim 10 rejected over the combination of Takagi, Duncan, Hampton and Kawano; Claim 22 rejected over the combination of Takagi, Duncan, Chen and Truax (US 5,175,774); and Claim 23 rejected over the combination of Takagi, Duncan and Truax. The complete statement of the rejections on appeal appear in the Final Office Action (Final Act. 4--18). 5 OPINI0N6 After consideration of Appellant's arguments and the Examiner's position in the Final Office Action and Answer, we AFFIRM the obviousness determinations for the reasons provided by the Examiner. We add the following for emphasis. The Examiner found Takagi describes forming semiconductor materials including a plurality of die locations, functional regions and a seal 5 The Examiner omitted some of the claims from the statements of rejection, but discussed them in the body of the rejections. Appellant's correct reproduction of the grounds of rejection evinces that the error was not harmful. App. Br. 5. 6 Appellant presents arguments principally directed to the first rejection and specifically independent claim 1 (App. Br. 5-13). Appellant also addresses the rejection of claims 3--4, 18 and 19 together under a separate heading (App. Br. 14--15). Appellants' arguments for claims 1, 3--4, 18 and 19 will be addressed. 3 Appeal2018-003275 Application 14/948,569 ring surrounding the functional portion of an integrated chip (Final Act. 5; Takagi ,r 6). The Examiner found Takagi describes forming markers that provide die information and location on the seal ring (Final Act. 5; Takagi ,r 8). The Examiner found Takagi discloses the markers could have been located in various locations that did not interfere with the functionality of the chip including the scribe line, the area between the functional region and the seal ring as well as the seal ring (Final Act. 5---6). The Examiner found Takagi did not disclose the marker was formed on the top portion of the seal ring (Final Act. 6). The Examiner found Duncan teaches the forming of markers comprising a plurality of grooves on a top portion of an integrated circuit by laser (Final Act. 6). The Examiner determined from the teachings of Takagi and Duncan it would have been obvious to place the location markings on the top portion of a seal ring (Final Act. 6). Appellant argues the Examiner's rejection is improper because Takagi and Duncan alone or in combination do not teach or suggest forming a plurality of grooves in a top portion of a seal ring with each groove positioned in between and away from an inner perimeter edge and an outer perimeter edge of the seal ring (App. Br. 6). Appellant argues the Examiner has failed to articulate a reason why it would have been obvious to modify the seal ring of Takagi to have the plurality of grooves on the top portion as required by the claimed invention (App. Br. 6). Appellant's arguments lack persuasive merit. According to the Specification: Thanks to an embodiment, it may be possible to obtain traceable integrated circuits easily and effectively, without their production yield being compromised; in fact, making the marking on 4 Appeal2018-003275 Application 14/948,569 the seal ring may allow avoiding risks of damaging the functional regions during the writing of the markings. (Spec. ,r 14.) The function of the markings on the seal ring in the claimed invention as well as Takagi is for facilitation of the location and orientation of the semiconductor wafer material (Spec. ,r 5; Takagi ,r,r 03---04). Takagi teaches the square wave pattern is cut on the periphery region of the seal ring (8) (Takagi ,r 8). Thus, Takagi obtains the same advantages described by Appellant's Specification. Appellant has failed to explain a patentable distinction based upon the specific location of the markings on the periphery region of the seal ring. Based on the evidence of record, we find that a person of ordinary skill in the art following the teachings of Takagi would have sought to place markings on the seal ring in a periphery location to facilitate the location and orientation of the semiconductor wafer material. We further find that a person of ordinary skill in the art would have reasonably expected that the marking indicia could have been placed on any peripheral portion of the seal ring, including the top portion positioned in between and away from an inner and outer perimeter edge of the seal ring, based on the teachings of Takagi so long as the marking would facilitate the location and orientation of the semiconductor wafer material without recourse to Appellants' Specification. 7 See, e.g., KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007) ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element 7 It is further noted the top portion of the seal ring as specified by the claimed invention is also a peripheral portion of the seal ring. 5 Appeal2018-003275 Application 14/948,569 for another known in the field, the combination must do more than yield a predictable result"); In re Siebentritt, 372 F.2d 566, 567-68 (CCPA 1967) ( express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success." (citations omitted)); In re Keller, 642 F.2d 413,425 (CCPA 1981) (" [T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) ("Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'"). Claims 3, 4, 18 and 198 Appellant presents arguments focused on the location of the markings on the top portion of the seal ring (App. Br. 14). This is the same argument presented above, which we did not find persuasive of reversible error. Appellant also argues the combination of Takagi, Duncan and Chen does not teach each groove having a depth that is less than the thickness of the top layer (App. Br. 15). 8 Appellant presents arguments principally directed to claim 3 (App. Br. 14-- 15). 6 Appeal2018-003275 Application 14/948,569 Appellant's argument is not persuasive of reversible error. Appellant has not disputed the Examiner's determination that Chen describes seal rings having multiple layers (App. Br. generally). Appellant has not disputed that Takagi and, Duncan utilize grooves for conveying information. Based on the evidence of record, we find that a person of ordinary skill in the art would have sufficient skill to select the appropriate depth of the groove pattern utilize for conveying information. Appellant also has not disputed that Takagi describes placing groove patterns in a seal ring for conveying information regarding location and orientation. Thus, we find that a person of ordinary skill in the art would have reasonably expected that the grooves utilize for conveying information could have thicknesses that does not exceed the thickness of a top layer. See In re O 'Farrell supra. Appellant has not explained that an unexpected advantage is obtained by utilizing grooves having specific depths. For the foregoing reasons and those presented by the Examiner we sustain the Examiner's obviousness determinations. DECISION The Examiner's rejections of claims 1--4, 8-13, 18, 19, 22 and 23 under 35 U.S.C. Â§103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 7