Eric Frank. Schulte

Patent Trials and Appeals Board

Oct 5, 2020

13781927 - (D) (P.T.A.B. Oct. 5, 2020)

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.
13/781,927 03/01/2013 Eric Frank Schulte SETN-12 2587
75076 7590 10/05/2020
Robert O. Groover
P.O. Box 520
Wills Point, TX 75169
EXAMINER
PATEL, DEVANG R
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
10/05/2020 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):
corcoran@technopatents.com
groover@technopatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC FRANK SCHULTE
____________

Appeal 2019-002735
Application 13/781,927
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 257, 259–265, 268–272, 275, and 276
of Application 13/781,927. Final Act. (May 26, 2016).2 We have jurisdiction
under 35 U.S.C. § 6.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies SET North America, LLC as the real
party in interest. Appeal Br. 3.
2 On November 28, 2016, Appellant filed a notice of appeal. The Appeal
Brief and the Examiner’s Answer were filed in due course. Appellant did not
file a Reply Brief. On December 11, 2017, the appeal was dismissed for
failure to pay the appeal forwarding fee. On February 7, 2018, the ’927
Application was deemed abandoned due to Appellant’s failure to respond to
Appeal 2019-002735
Application 13/781,927
2
For the reasons set forth below, we reverse.
I. BACKGROUND
The ’927 Application describes methods for 3D interconnect bonding
of multiple chips without solder reflow. Spec. ¶ 3. Claim 257 is
representative of the ’927 Application’s claims and is reproduced below
from the Claims Appendix of the Appeal Brief.
257. A method for bonding microelectronic elements,
comprising the steps of:
a) flowing a nitrogen-containing reducing gas through a
glow discharge at atmospheric pressure to produce a
temporary radical-enriched condition, and flowing the
gas, while still in its temporary radical-enriched
condition, over first and second substrates having
respective contacting metallizations, thereby reducing
native oxides and also simultaneously passivating
substantially all of the contacting metallizations;
b) compressing the substrates together, without any
conductive liquid phase material, to mechanically
bond the substrates together by deforming at least
some of their passivated contacting metallizations;
wherein at least one of the substrates has contacting
metallizations on both sides of the substrate; and
c) repeating step b), using additional substrates which
have been subjected to step a), to bond additional
substrates to a stack of substrates which includes the
first and second substrates.
Appeal Br., Claims App. 1 (emphasis added).

communications from the Office. On March 8, 2018, Appellant petitioned to
revive the ’927 Application. The petition was granted on July 31, 2018, and
the appeal was docketed on February 26, 2019.
Appeal 2019-002735
Application 13/781,927
3
II. REJECTIONS
On appeal, the Examiner maintains3 the following rejections:
1. Claims 257, 259, 265, and 268–272 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Uner ’8604 and
Ko.5 Final Act. 7.
2. Claims 260 and 275 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Uner ’860, Ko, and
D’Asaro.6 Final Act. 12.
3. Claims 261 and 276 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Uner ’860, Ko, and Tong.7
Final Act. 13.

3 After entry of the Final Action, Appellant canceled claim 274 without
prejudice. Amendment with Notice of Appeal (November 28, 2016). The
amendment was entered on January 11, 2017. Cancellation of claim 274
mooted rejections of this claim.
4 US 6,551,860 B2, issued April 22, 2003.
5 Cheng-Ta Ko & Kuan-Neng Chen, Wafer-level bonding/stacking
technology for 3-D integration, 50 Microelectronics Reliability 481 (2010).
Both the Examiner and Appellant refer to this reference as “Chen.” We
follow our normal practice of referring to the reference by the last name of
its first author.
6 US 5,918,794, issued July 6, 1999.
7 US 2007/0232023 A1, published October 4, 2007.
Appeal 2019-002735
Application 13/781,927
4
4. Claims 262 and 263 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Uner ’860, Ko, and Kang.8
Final Act. 14.
5. Claim 264 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Uner ’860, Ko, and Uner NPL.9 Final
Act. 14.
III. DISCUSSION
Appellant argues that each claim on appeal should be considered
separately. Appeal Br. 10, 21–22. Appellant, however, only presents
substantive argument for reversal of the rejection of independent claims 257
and 272. See id. at 10–21. Under the rules governing this appeal, Appellant
has not done enough to merit separate consideration of each of the claims on
appeal. 37 C.F.R. § 41.37(c)(1)(iv). We, therefore, limit our discussion to
claims 257 and 272. Each of the remaining claims will stand or fall with its
parent independent claim. Id.
A. Rejection of claims 257, 259, 265, and 268–272 as
unpatentable over the combination of Uner ’860 and Ko
1. Claim 257
The Examiner rejected independent claim 257 as unpatentable over
the combination of Uner ’860 and Ko. Final Act. 7–9.

8 Sung K. Kang, Thermal Compression Bonding of Aluminum Bumps in TAB
Applications, 1998 IEEE Electronic Components and Technology
Conference 1305 (1998).
9 Jason R. Uner et al., The Application of Atmospheric Pressure Plasma to
various steps in IC Packaging, SEMICON West B-1 (2000).
Appeal 2019-002735
Application 13/781,927
5
The Examiner found that Uner ’860 describes or suggests steps (a)
and (b) of claim 257. Id. at 7–8. The Examiner also found that it would have
been obvious to a person of ordinary skill in the art to repeat step (b) as
recited in step (c). Id. at 8 (citing Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1330–31 (Fed. Cir. 2009)). In the alternative, the Examiner
found that Ko describes or suggests bonding multiple wafers by repeating
the bonding procedure. Id. at 8–9.
Appellant argues that this rejection should be reversed because the
Examiner erred by finding that the prior art describes or suggests each of
steps (a) through (c) recited in claim 257. Appeal Br. 19. Appellant also
argues that the Examiner improperly ignored the inventor’s Rule 132
Declaration (the “Schulte Declaration”). Id. at 15–18.
Because we reverse, we need only address Appellant’s arguments and
the Examiner’s findings regarding step (a) of claim 257.
Appellant argues that neither Uner ’860 nor Ko describe or suggest
“passivating substantially all of the contacting metallizations” as recited in
claim 257’s step (a). Id. at 13.
In rejecting claim 257, the Examiner found that Uner ’860 describes
passivating the contacting metallizations to prevent re-oxidation. Final Act.
7 (citing Uner ’860, Figs. 5, 6, 10, 15; 2:6–25, 14:25–56). The portions of
Uner ’860 cited by the Examiner do not mention or describe passivation of
the contacting metallizations. Indeed, we are unaware of any mention of
passivation in Uner ’860. Nor did the Examiner find that Uner ’860’s
process inherently passivates substantially all of the contacting
metallizations as required by claim 257.
For this reason, the Examiner’s finding regarding passivation is not
supported by evidence. Thus, the rejection of claim 257 must be reversed.
Appeal 2019-002735
Application 13/781,927
6
Because we have reversed the rejection of claim 257, we also reverse the
rejection of claims 259, 265, and 268–271, which ultimately depend from
claim 257.
2. Claim 272
The Examiner also rejected independent claim 272 as unpatentable
over the combination of Uner ’860 and Ko. Final Act. 10–12.
Appellant’s arguments for reversal of the rejection of claim 272 are
substantively the same as those Appellant presented in arguing for reversal
of the rejection of claim 257. For the reasons set forth above, we have
reversed the rejection of claim 257. We, therefore, also reverse the rejection
of claim 272.
B. Rejection of claims 260 and 275 as unpatentable over the
combination of Uner ’860, Ko, and D’Asaro
The Examiner rejected claims 260 and 275 as unpatentable over the
combination of Uner ’860, Ko, and D’Asaro. Final Act. 12–13.
Appellant does not present substantive argument for reversal of this
rejection. See Appeal Br. 10–23. We, therefore, assume that Appellant is
arguing that claims 260 and 275 are patentable based upon the alleged
patentability of their parent independent claims.
Because we have reversed the rejection of claims 257 and 272, we
also reverse the rejection of claims 260 and 275.
C. Rejection of claims 261 and 276 as unpatentable over the
combination of Uner ’860, Ko, and Tong
The Examiner rejected claims 261 and 276 as unpatentable over the
combination of Uner ’860, Ko, and Tong. Final Act. 13.
Appeal 2019-002735
Application 13/781,927
7
Appellant does not present substantive argument for reversal of this
rejection. See Appeal Br. 10–23. We, therefore, assume that Appellant is
arguing that claims 261 and 276 are patentable based upon the alleged
patentability of their parent independent claims.
Because we have reversed the rejection of claims 257 and 272, we
also reverse the rejection of claims 261 and 276.
D. Rejection of claims 262 and 263 as unpatentable over the
combination of Uner ’860, Ko, and Kang
The Examiner rejected claims 262 263 as unpatentable over the
combination of Uner ’860, Ko, and Kang. Final Act. 14.
Appellant does not present substantive argument for reversal of this
rejection. See Appeal Br. 10–23. We, therefore, assume that Appellant is
arguing that claims 262 and 263 are patentable based upon the alleged
patentability of their parent independent claim 257.
Because we have reversed the rejection of claim 257, we also reverse
the rejection of claims 262 and 263.
E. Rejection of claim 264 as unpatentable over the combination of
Uner ’860, Ko, and Uner NPL
The Examiner rejected claim 264 as unpatentable over the
combination of Uner ’860, Ko, and Uner NPL. Final Act. 14–15.
Appellant does not present substantive argument for reversal of this
rejection. See Appeal Br. 10–23. We, therefore, assume that Appellant is
arguing that claim 264 are patentable based upon the alleged patentability of
its parent independent claim.
Because we have reversed the rejection of claim 257, we also reverse
the rejection of claim 264.
Appeal 2019-002735
Application 13/781,927
8
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Reversed
257, 259, 265,
268–272 103(a) Uner ’860, Ko
257, 259, 265,
268–272
260, 275 103(a) Uner ’860, Ko, D’Asaro 260, 275
261, 276 103(a) Uner ’860, Ko, Tong 261, 276
262, 263 103(a) Uner ’860, Ko, Kang 262, 263
264 103(a) Uner ’860, Ko, Uner NPL 264
Overall Outcome
257, 259–265,
268–272, 275,
276
REVERSED