Ex Parte Pass

Patent Trial and Appeal Board

Aug 25, 2014

11505658 (P.T.A.B. Aug. 25, 2014)

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.
11/505,658 08/16/2006 Thomas P. Pass 7923P002 6631
84372 7590 08/25/2014
SunPower/ BSTZ
Blakely Sokoloff Taylor & Zafman LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
MOORE, KARLA A
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
08/25/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS P. PASS
____________

Appeal 2012-006171
Application 11/505,658
Technology Center 2800
____________

Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and N. WHITNEY
WILSON, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Thomas P. Pass (Appellant) 1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision finally rejecting claims 16-19, 22, 25-27, 29-35,
37, 38, and 40. Pending claims 24, 28, 36, and 39 have been withdrawn
from consideration by the Examiner, and are not before us. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 According to Appellant, the Real Party in Interest is SunPower Corporation
(Appeal Br. 3).
Appeal 2012-006171
Application 11/505,658

2
We AFFIRM.2

STATEMENT OF THE CASE
The invention relates to an apparatus for single-sided etching
comprising a vacuum chamber, a perforated belt positioned against the
vacuum chamber, and an etch chamber positioned on an opposite side of the
perforated belt from the vacuum chamber and having an opening through
which an etchant is released. Appellant discloses that while a front side of
the wafer is exposed to the etchant, the vacuum chamber creates a pressure
differential securing the back side of the wafer to the belt to protect the back
side from the etchant. Spec. ¶ [0016].
Appellant argues the claims as a group. See Appeal Br. 8.
Accordingly, we decide the appeal based on representative independent
claim 16, reproduced below:
16. An etcher comprising:
an etch chamber having an opening sized to admit release of an
etchant there through to etch a front side of a wafer;
a perforated belt positioned above the etch chamber; and
a vacuum chamber positioned above the perforated belt, the
vacuum chamber configured to create a pressure differential which
protects the back side of the wafer from the etchant and which
secures, via the back side of the wafer, the wafer to the belt to suspend
the wafer above the etch chamber.

Appeal Br. 13, Claims App’x.

The Rejections

2 Our decision refers to Appellant’s Brief (Appeal Br.) filed October 12,
2011, the Examiner’s Answer (Ans.) mailed January 18, 2012, and
Appellant’s Reply Brief (Reply Br.) filed March 7, 2012.
Appeal 2012-006171
Application 11/505,658

3
The Examiner maintains, and Appellant appeals from, the following
rejections:
1) Claims 16, 19, 22, 25-27, 29, 30, 32-35, and 37 under 35 U.S.C.
§ 102(b) as anticipated by Schmid;3
2) Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Schmid in view of Appellant’s Admitted Prior Art (AAPA)4 or
Seeser;5
3) Claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Schmid in view of Ogami;6
4) Claim 31 under 35 U.S.C. § 103(a) as unpatentable over
Schmid; and
5) Claims 38 and 40 under 35 U.S.C. § 103(a) as unpatentable
over Schmid in view of Gursky.7
The Issue Presented
The dispositive issue presented by Appellant’s arguments is whether
the Examiner erred in finding Schmid teaches an etch chamber to etch a
front side of a wafer, and a vacuum chamber inherently creating a pressure
differential sufficient to protect the back side of the wafer.
We answer this question in the negative. We, therefore, sustain the
Examiner’s rejections based on Schmid for the reasons expressed in the
Answer. We add the following for emphasis.

3 EP 0732424 A1, published September 18, 1996.
4 The Examiner identifies Specification paragraphs 2-8 as disclosing the
AAPA.
5 US 5,879,519, issued March 9, 1999.
6 US 4,693,211, issued September 15, 1987.
7 US 4,227,983, issued October 14, 1980.
Appeal 2012-006171
Application 11/505,658

4

ANALYSIS
Anticipation, a factual inquiry, is established when the Examiner
shows that a single prior art reference would have described to one skilled in
the art an embodiment that contains all features of the claimed invention
arranged as specified in the claims, either expressly or inherently, in a
manner enabling one skilled in the art to practice the invention without
undue experimentation. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
The Examiner finds Schmid discloses an etcher comprising an etch
chamber (bottom part of 12) having an opening (not numbered) sized to
release an etchant to etch a front side of a wafer (17), a perforated belt (18)
positioned above the etch chamber for transporting the wafer into the etcher,
and a vacuum chamber above the belt opposite to the etch chamber and
“configured to create a pressure differential which protects the back side of
the wafer from the etchant and which secures, via the back side of the wafer,
the wafer to the belt.” Ans. 5-6.
Appellant argues Schmid fails to disclose an etcher having a vacuum
chamber to create a pressure differential sufficient to protect the back side of
the wafer from etchant because “Schmid is configured to etch both sides of a
transported circuit board from the underside of the circuit board.” Appeal
Br. 8; Reply Br. 2. Indeed, Appellant argues Schmid etches thin circuit
boards with a thickness of 25 microns or less, not wafers of between 50 to
greater than 250 microns thick. Appeal Br. 9. Further, Appellant urges that
the Examiner fails to provide support for the finding that Schmid’s etcher is
Appeal 2012-006171
Application 11/505,658

5
capable of creating sufficient pressure differential to protect the back side of
a wafer from etchant. Id.
Appellant’s arguments are not persuasive. Although Schmid’s etcher
etches both sides of a circuit board, it does so by treating only one side of a
circuit board at a time by using turning station (14) after first etching
chamber (12) for turning the circuit board before transport to second etching
chamber (13). As the Examiner notes, Schmid’s capability of etching both
sides of the circuit board sequentially does not alter the fact that Schmid
etches one side of the circuit board at a time, while carrying the circuit board
on the perforated belt above the etching chamber, thereby protecting the
other side of the circuit board. See Schmid, Abstract. Appellant’s argument
does not demonstrate error in the Examiner’s finding that Schmid’s etcher is
configured to etch only one side of the circuit board at a time, while
protecting the other side, as recited in the appealed claims.
With regard to Appellant’s argument that Schmid etches thin circuit
boards, not thicker wafers, we find neither the claims nor Appellant’s
Specification defines “wafer” in a manner so as to exclude thin circuit
boards or thicknesses in the range of 25 microns or less. Spec. ¶ [0025].
“Absent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d
1320, 1325 (Fed Cir. 2004). Moreover, as the Examiner notes, the claims
are directed to apparatus, whereas the wafer is the material or article being
worked upon by the apparatus. Ans. 12. In re Casey, 370 F.2d 576, 580
(CCPA 1967) (“inclusion of the material or article worked upon by a
structure being claimed does not impart patentability to the [apparatus]
Appeal 2012-006171
Application 11/505,658

6
claims.”) Appellant neither rebuts this point, nor shows how Schmid’s
apparatus differs structurally from the claimed apparatus.
Finally, as to Appellant’s argument that the Examiner fails to provide
support for the finding that Schmid inherently creates a pressure differential
sufficient to protect the back side of the workpiece, the Examiner responds
that Schmid provides sufficient pressure differential to support the
workpiece against the perforated belt and vacuum chamber. Ans. 11-12. As
such, the Examiner finds “[i]n order for the support suction to be effective, it
would have to prevent entry of outside fluids thereby protecting the side of
the workpiece not undergoing etching.” Id. at 12. The Examiner has shown
that Schmid teaches an etcher having the same or substantially the same
structure as claimed. Because Schmid teaches the vacuum chamber holds
the wafer to the perforated belt, the Examiner’s finding, that Schmid’s
vacuum chamber and perforated belt inherently protects the back side of the
wafer while the front side is exposed to etchant, is reasonable. Appellant
fails to show that Schmid is not capable of protecting the back side of the
wafer, and therefore, fails to show error in the Examiner’s inherency finding.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
As Appellant does not separately argue the remaining rejections under
35 U.S.C. 103(a), we will sustain these rejections as well.

ORDER

Upon consideration of the record, and for the reasons given above and
in the Answer, it is
Appeal 2012-006171
Application 11/505,658

7
ORDERED that the decision of the Examiner rejecting claims 16-19,
22, 25-27, 29-35, 37, 38, and 40 over Schmid, alone or in combination with
AAPA, Seeser, Ogami, or Gursky, is affirmed; and
FURTHER ORDERED that 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).

AFFIRMED

lp