Amkor Technology, Inc.

Patent Trials and Appeals Board

Jan 14, 2021

2020000343 (P.T.A.B. Jan. 14, 2021)

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.
15/078,474 03/23/2016 Gyu Wan Han 28899US02 9687
128392 7590 01/14/2021
Amkor Technology Singapore Holding Pte. Ltd.
c/o McAndrews, Held & Malloy
500 West Madison St., Floor 34
Chicago, IL 60661
EXAMINER
BRASFIELD, QUINTON A
ART UNIT PAPER NUMBER
2814
MAIL DATE DELIVERY MODE
01/14/2021 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 GYU WAN HAN, JIN SEONG KIM,
and BYONG WOO CHO

Appeal 2020-000343
Application 15/078,474
Technology Center 2800
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
RAE LYNN P. GUEST, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 11–16, and 18–20. See Final Act.
1. The Examiner withdrew the rejection of dependent claims 10 and 17
(Ans. 3). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Amkor Technology,
Inc. (Appeal Br. 2).
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Application 15/078,474

2
CLAIMED SUBJECT MATTER
The claims are directed to a semiconductor device. Claim 1,
reproduced below, is illustrative of the claimed subject matter (emphasis
added to highlight a key limitation in dispute):
1. An electronic device comprising:
an electronic component comprising a conductive pad;
an encapsulating material on the electronic component;
an aperture through the encapsulating material that
extends vertically completely through the encapsulating
material to at least the conductive pad, the entire aperture
defined by an inner surface of the encapsulating material and
shaped like a portion of an oblate ellipsoid, the oblate ellipsoid
having a vertical semi-principal axis and a horizontal semi-
principal axis longer than the vertical semi-principal axis; and
a conductive interconnection structure that extends
through the aperture and protrudes from the encapsulating
material, is electrically connected to the conductive pad, and is
separated from at least a portion of the inner surface of the
encapsulating material.

Independent claim 13 is similar to claim 1 except it recites that “the
entire aperture is spaced like a portion of a compressed sphere” rather than
an oblate ellipsoid (Appeal Br. Claims Appendix 3; see also Spec. ¶ 70
which states that “a compressed spherical shape . . . may also be referred to
as an oblate ellipsoid”).
Independent claim 18 is also directed to a similar electronic device as
in claims 1 and 13 but instead of reciting a specific shape for the aperture,
requires that the encapsulating material has “no undercut” and that a “lateral
gap between the encapsulating material and the conductive interconnection
structure continually increases” (Appeal Br. Claims Appendix 38).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kitano US 5,608,265 Mar. 4, 1997
Jang US 2009/0289359 A1 Nov. 26, 2009

REJECTION
Claims 1–9, 11–16, and 18–20 are rejected under 35 U.S.C. § 103 (a)
as being unpatentable over Jang in view of Kitano. Final Act. 3.

OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection of claims 1–3, 5–9, 11–15, and 18–20 (see
generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Appellant to identify
the alleged error in the Examiner’s rejection). We sustain the rejection for
the reasons expressed by the Examiner in the Final Office Action and the
Answer.
On the other hand, we reverse the Examiner’s rejection of claims 4
and 16 for reasons explained by Appellant and herein (e.g., Appeal Br. 19,
20; Reply Br. 6).
We add the following primarily for emphasis.
Appellant’s main argument is that Kitano exemplifies only a semi-
spherical aperture shape and not that of an oblate ellipsoid or compressed
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sphere as recited in claims 1 and 13. However, as pointed out by the
Examiner, claim 1 merely requires that the aperture be shaped like a portion
of an oblate ellipsoid, and claim 13 merely requires it be shaped like a
portion of a compressed sphere (e.g., Ans. 5, 6, 13). In light of the breadth
of this claim language, it is not apparent that the claim language precludes
the shape exemplified in Kitano.
However, even assuming arguendo that Appellant’s position was
adopted (that is, that the claimed aperture shape does not encompass that of
Kitano), changing the semi-spherical shape to fall within the recited shape(s)
would have been prima facie obvious, considering the similar shape as
depicted in Kitano. It has been generally held that ordinarily changes in
sizes or shapes of known elements are within the level of skill in that art,
especially in the absence of unexpected results or criticality. Cf. Gardner v.
TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that, where
the only difference between the prior art and the claims was a recitation of
relative dimensions of the claimed device and a device having the claimed
relative dimensions would not perform differently than the prior art device,
the claimed device was not patentably distinct from the prior art device); see
also In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (change in shape is
ordinarily prima facie obvious).
It is well established that obviousness does not require absolute
predictability of success; rather, all that is required is a reasonable
expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009).
The “inferences and creative steps that a person of ordinary skill in the art
would employ” can be taken into account. KSR Int’l v. Teleflex Inc., 550
U.S. 398, 417–18 (2007). “A person of ordinary skill is also a person of
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ordinary creativity, not an automaton.” Id. at 421. While Appellant argues
that the recited shape has an advantage over a semi-spherical shape because
it provides for a greater gap between the connection (solder) and sides of the
aperture (Appeal Br. 15), Kitano’s shape shows such a gap (Fig. 4). Neither
claim 1 nor claim 13 requires any specific gap size or any minimum for the
length of the horizontal axis or width to be longer or greater than the vertical
axis or height such that a very minute difference, e.g., .001mm longer, is
encompassed by the claim language. Notably, Appellant’s Specification
discusses the advantage of a reduced vertical profile for attachment of one
electronic device to another because a multi-ball or snowman structure is not
needed for the solder connection (Spec. ¶¶ 99, 100), and the shapes
exemplified in the applied prior art also share this advantage as they also do
not require using a multi-ball or snowman structure.
As pointed out by the Examiner, Kitano discusses the importance of
having the aperture opening being larger than the depth (Kitano col. 6, ll. 38-
49; Final Act. 4; Ans. 5). Kitano also exemplifies other different aperture
shapes (see, e.g., Figs. 3, 8). Jang exemplifies yet another shape, that of a
groove 149 (Jang ¶¶ 62, 63). Thus, adjusting the shape of the known
apertures within an electronic device is considered within the ambit of
inferences and creativity of an ordinarily skilled artisan, especially in light of
Kitano’s and Jang’s teachings.
Appellant also argues with respect to claims 1, 13, and 18, that there is
no reason to modify Jang’s groove shaped aperture 149 based on Kitano’s
teachings (e.g., Appeal Br. 15, 16; claim 18 requires that the aperture
“comprises no undercut” (Appeal Br. Claims Appendix 38)). Appellant
argues that Jang has a reinforcing collar 124 for improved solder reliability
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and to replace that with Kitano’s structure would thwart the purpose of Jang
(Appeal Br. 16). We do not find this argument persuasive of reversible
error. Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Considering the applied prior art in its entirety, one of
ordinary skill would have appreciated that there is no teaching away from
adjusting the size/shape of the aperture 149 so as to be shaped more akin to
that of Kitano’s and as claimed. Cf. Winner Int’l Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A
known or obvious [device] does not become patentable simply because it has
been described as somewhat inferior to some other [device] for the same
use.”).
With respect to dependent claims 2, 3, 7, 9, 14, 15, 19, and 20,
Appellant’s arguments do not show reversible error in the Examiner’s
obviousness determination for at least the reasons explained by the
Examiner (Appeal Br. 17–32; Ans. 7–25).
On the other hand, Appellant’s argument’s with respect to dependent
claims 4 and 16 which each recite that the “interconnection structure does
not contact the encapsulating material” are persuasive (Appeal Br. 19, 20,
and 28; Reply Br. 6, 11). The plain meaning of this claim language requires
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that there is no contact between these two elements. As explained in the
Specification, the encapsulating material may extend to and directly contact
the second dielectric layer without contacting the (re-formed)
interconnection structure (e.g., Appeal Br. 6 n.17, relying on Spec. ¶ 85).
The Examiner has not adequately explained how there is “no contact”
between the interconnection structure and the encapsulating material of the
Jang/Kitano combination, or why such a modification would have been
obvious (e.g., Ans. 10, 11; Reply Br. 6 (stating that the Examiner’s reliance
on Fig. 4 of Kitano is misplaced because it shows that there is at least some
contact between the encapsulating material and the solder ball
interconnection structure)).
Thus, we reverse the Examiner’s §103 rejection of dependent claims 4
and 16.

CONCLUSION
The Examiner’s rejection of claims 1–3, 5–9, 11–15, and 18–20 is
AFFIRMED.
The Examiner’s rejection of claims 4 and 16 is REVERSED.

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Application 15/078,474

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 11–16,
18–20
103(a) Jang, Kitano 1–3, 5–9,
11–15, 18–20
4, 16

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)(iv).

AFFIRMED IN PART