Ex Parte 6,933,505 et al

Patent Trial and Appeal Board

Feb 19, 2014

90011681 (P.T.A.B. Feb. 19, 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.
90/011,681 05/10/2011 6,933,505 3523-1007-1 1619
466 7590 02/19/2014
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/19/2014 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 OY AJAT LTD1
Patent Owner, Appellant
____________

Appeal 2014-000839
Reexamination Control 90/011,681
Patent US 6,933,505 B22
Technology Center 3900
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Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
IRVIN E. BRANCH, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

1 Oy Ajat Ltd is the real party in interest. App. Br. 1
2 Issued Aug. 23, 2005 to Vuorela (hereinafter the “Vuorela Patent”).
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DECISION ON APPEAL
STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 from the Final Rejection of claims 1-16. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed Dec. 28, 2012), the Answer (mailed May
31, 2013), and the Reply Brief (filed June 26, 2013) for the respective
details. We have considered in this decision only those arguments
Appellant’s actually raised in the Briefs. Any other arguments which
Appellant’s could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to an x-ray and gamma-ray radiant
energy imaging device having a temperature sensitive semiconductor
substrate bump-bonded to a semiconductor CMOS readout substrate. The
bump bonds are formed of a low-temperature, lead-free binary solder alloy
having a specific melting point to prevent damage to the temperature
sensitive and potentially brittle detector substrate during assembly. See
generally ‘505 Patent, Abstract.

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Claim 1 is illustrative of the claimed invention and reads as follows:

1. An x-ray and gamma-ray radiant energy imaging
device comprising:
a detector substrate, the detector substrate having a front surface and a
back surface, and disposed to convert said radiant energy impinging on the
front surface to electrical charge;
a plurality of charge collector contacts mounted on the back surface of
the detector substrate in a collector contact pattern, the collector contacts for
collecting the electrical charge;
a readout substrate having a readout surface and a plurality of readout
contacts mounted on the readout surface in a readout contact pattern, the
readout contact pattern corresponding to the collector contact pattern, and
the readout contacts for receiving electrical charge from corresponding
collector contacts; and
a low-temperature, lead-free solder bump electrically interconnecting
a corresponding collector and readout contact, the lead-free solder bump
having a melting point between about 95°C. and about 183°C.

The Examiner’s Rejection

The Examiner’s Answer cites the following prior art references:
Spartiotis US 5,952,646 Sep. 14, 1999
Cheung US 6,638,847 B1 Oct. 28, 2003
(filed Apr. 19, 2000)

Claims 1-16, all of the appealed claims, stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Spartiotis in view of Cheung.

ANALYSIS
Claims 1-3 and 5-16
Appellant’s arguments, with respect to the Examiner’s 35 U.S.C. §
103(a) rejection of each of the appealed independent claims 1, 15, and 16,
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focus on the contention that the Examiner has not provided a proper basis for
the proposed Spartiotis/Cheung combination. Appellant’s initial contention
challenging the Examiner’s proposed substitution of Cheung’s lead-free
solder for the lead solder of Spartiotis directs attention to the alleged shock
absorbing advantages of the softer solder bump resulting from the use of
lead-based solder in Spartiotis. App. Br. 12-14; Reply Br. 6. According to
Appellant, the advantages of lead solder bumps would have significantly
outweighed any environmental benefits that might have resulted from
substituting Cheung’s lead-free solder for the lead solder of Spartiotis. App.
Br. 15 and 24-26.
We find Appellant’s argument unpersuasive of error in the
Examiner’s stated position. Ans. 4. Initially, while the Examiner
acknowledges lead solder is well known and has advantages, the Examiner
points out, we agree that the alleged advantages of lead solder discussed in
Spartiotis are not in comparison with lead-free solder but, instead, as
compared with high temperature indium-based solders. Ans. 10. We also
find no error in the Examiner’s determination that Cheung’s discussion of
consideration given to a world-wide ban on lead-containing solders is
sufficient motivation to the ordinarily skilled artisan to seek lead-free solder
substitutes. Ans. 11. Further, we agree with the Examiner that even
assuming, arguendo, that a radiation imaging device using lead-free solder
would have been less preferred than a radiation imaging device using lead
solder, this would not be sufficient to render the less preferred embodiment
non-obvious. See In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Ans. 12
and 18.
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We further find unpersuasive Appellant’s contention that Cheung is
non-analogous art with respect to Spartiotis as well as the invention claimed
in the Vuorela Patent. According to Appellant (App. Br. 18-19), Cheung is
directed to avoiding lead solder in consumer electronics, instead of the
medical and industrial imaging devices of Spartiotis and the Vuorela Patent.
We find no error in the Examiner’s determination that Cheung’s
teaching of forming lead-free solder bump interconnections to address
environmental concerns related to the use of lead solders is reasonably
pertinent to the problem faced by the inventor of the Vuorela Patent. See In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Ans. 15-16. Contrary to
Appellant’s contention, (App. Br. 18), Cheung is not limited to “consumer”
electronics applications, but, instead, is more generally directed to
“electronic” products and, specifically, to forming lead-free solder bump
interconnections for flip-chip bonding applications (col. 1, ll. 7-9 and col.
2,ll. 8-13).
As explained by the Examiner, the inventor of the Vuorela Patent
was faced with the problem of finding a low-temperature bump bond solder
alloy that was also lead-free to address environmental concerns with the
production of a lead based toxic waste stream (col. 2, ll. 17-19). Id., at 15.
Thus, we agree with the Examiner that Cheung’s lead-free flip-chip bonding
teachings are applicable to both Spartiotis and the Vuorela Patent’s field of
radiation imaging devices which utilize bump (flip-chip) solder bonding.
We further find unpersuasive Appellant’s contention that the issue of
lead toxicity was not a major concern in the manufacturing of dental
imaging devices because recycling procedures for recovering lead, as well as
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the toxic cadmium element, were conventional in the art.3 App. Br. 19. We
agree with the Examiner that, although measures were being taken to
recover lead and cadmium toxic wastes in dental imaging device
manufacturing, an ordinarily skilled artisan would have recognized and
appreciated the obviousness of choosing a lead-free solder alternative to
keep the lead out of the manufacturing stream to obviate the need for waste
recovery. Ans. 16.
We find equally unpersuasive Appellant’s further related argument
that imaging devices used in medical diagnosis and non-destructive testing
are not subject to regulatory restrictions concerning the use of lead solder
bumps.4 We find no error in the Examiner’s determination, regardless of
any exemption of medical diagnostic and non-destructive testing devices
from legal restrictions, of the obvious use of lead-free solder bumps as an
alternative to lead solder bumps based solely on environmental concerns.
Ans. 17.
Finally, we find unpersuasive Appellant’s arguments in the Reply
Brief which contend that, while the Examiner suggests that the teachings of
Cheung suggest that lead-free solder bumps were a possible alternative for
radiant energy imaging devices, the Examiner has not addressed the question
of whether lead-free solder is a suitable alternative for radiant energy
imaging devices. Reply Br. 1-6. While Appellant contends that the use of

3 Appellant cites the Spartiotis June 7, 2012 declaration in support. The
declarant Konstantinos Spartiotis is the first-named inventor of the Spartiotis
patent (U.S. Patent No. 5,952,646) relied upon by the Examiner in the
rejection.
4 Appellant cites the Spartiotis Nov. 18, 2011 declaration in support.
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lead-based solders has certain advantages, e.g., a “softer” bump resulting in
a cushioning effect, which the Examiner acknowledges, there is no
indication that these supposed advantages are unique to radiation energy
imaging devices. Accordingly, we find no error in the Examiner’s
determination that an ordinarily skilled artisan would have found it obvious
to substitute a lead-free solder bump, as taught by Cheung, for the lead-
based solder of Spartiotis to address the environmental concerns of toxic
lead waste, and the results would be predictable. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). It is also noteworthy that, as
pointed out by the Examiner (Ans. 4), the melting point of the example lead-
free bismuth tin alloy solder bump of Cheung is 138.5° C (col. 7, ll. 37-38),
which is well below the preferable 180° melting point temperature suggested
for the radiant energy imaging device of Spartiotis (col. 5, ll. 27-30).
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1, 15, and 16, as well as the rejection of
dependent claims 2, 3, and 5-14 not separately argued by Appellant.
Claim 4
We also sustain the Examiner’s obviousness rejection of dependent
claim 4. Appellant’s arguments direct attention to the claimed inclusion of
the cadmium detector substrate element limitation. App. Br. 27; Reply Br.
6-7. According to Appellant, it was conventional, at the time of the
invention, to use recovery techniques to address the toxic waste concerns of
both cadmium and lead. In Appellant’s view, therefore, an ordinarily skilled
artisan would continue to take advantages of the advantages of lead solder in
radiation imaging devices and use recovery techniques to address toxic
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waste environmental concerns thereby, making the substitution of lead-free
solder non-obvious. Id.
We find Appellant’s argument unpersuasive of error in the
Examiner’s determination that Appellant’s own arguments provide support
for an alternative “obvious-to-try” rationale to support the conclusion of
obviousness. Ans. 19. That is, one could choose to address the
environmental concerns of lead solder by substituting a lead-free solder, as
taught by Cheung, or address environmental concerns by recovering lead as
a waste product as argued by Appellant. When there are a finite number of
known identified, predictable solutions (e.g., lead solder waste recovery or
using lead-free solder), ordinarily skilled artisans would have had a good
reason to pursue the known options within their grasp, including using lead-
free solder as suggested by Cheung. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Appellant has provided no arguments in their Reply
Brief challenging the Examiner’s proposed alternative “obvious-to-try”
rationale to support the conclusion of obviousness.

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1-16 for obviousness under 35 U.S.C. § 103(a).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-16 under
35 U.S.C. § 103(a).

TIME PERIOD FOR RESPONSE

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

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For Patent Owner:

YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314

For Third Party Requester:

IP & T GROUP LLP
770 Little River Turnpike
Suite 207
Annandale, VA 22003