Ex Parte BORTHAKUR et al

Patent Trials and Appeals Board

Jun 27, 2019

15453038 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/453,038 03/08/2017 Swarnal BORTHAKUR
129948 7590 07/01/2019
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (VT)
5005 E. McDowell Road, MD A 700
Phoenix, AZ 85008
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.
APT20 l 3-0098CO 1 US 5442
EXAMINER
HALIYUR, PADMA
ART UNIT PAPER NUMBER
2698
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SWARNAL BORTHAKUR, VLADIMIR KOROBOV, and
MARC SULFRIDGE
Appeal 2018-008276
Application 15/453,038 1
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-15. Claims 1 7 and 18 have been canceled, and
claims 16, 19 and 20 are allowed. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Semiconductor
Components Industries, LLC. App. Br. 2.
2 See Final Act. 10.
Appeal 2018-008276
Application 15/453,038
STATEMENT OF THE CASE3
The Invention
Appellants' disclosed and claimed inventions relate to "imaging
systems with through-oxide vias in first and second integrated circuit dies."
Spec. ,-i 2.
Exemplary Claims
Claims 1 and 7, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. An image sensor package comprising:
an image sensor die having first and second opposing
surfaces;
a metal structure on the first surface of the image sensor
die·
'
a signal processing die bonded to the second surface of
the image sensor die; and
a through-oxide via that extends through the image
sensor die and into the signal processing die, wherein the
through-oxide via electrically connects the signal processing
die to the metal structure.
7. An integrated circuit package, comprising:
a first die;
a second die attached to the first die; and
a via that extends through the first die and into the
second die and that electrically connects the first die to the
second die.
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
May 25, 2018); Reply Brief ("Reply Br.," filed Aug. 8, 2018); Examiner's
Answer ("Ans.," mailed June 22, 2018); Final Office Action ("Final Act.,"
mailed Feb. 7, 2018); and the original Specification ("Spec.," filed
Mar. 8, 2017).
2
Appeal 2018-008276
Application 15/453,038
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Tsai et al. ("Tsai") US 2012/0292730 Al Nov. 22, 2012
Rejection on Appeal
Claims 1-15 stand rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Tsai. Final Act. 4.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 10-16), we decide the
appeal of the anticipation rejection of claims 1-6 on the basis of illustrative
claim 1; and we decide the appeal of the anticipation rejection of claims 7, 8,
and 10-15 on the basis of representative claim 7. We decide the appeal of
separately argued claim 9, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to anticipation rejection of claims 1-6 for the specific reasons
discussed below.
However, we disagree with Appellants' arguments with respect to
rejection of claims 7-15, and we incorporate herein and adopt as our own for
this rejection: (1) the findings and reasons set forth by the Examiner in the
3
Appeal 2018-008276
Application 15/453,038
action from which this appeal is taken, and (2) the reasons and rebuttals set
forth in the Examiner's Answer in response to Appellants' arguments. We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
1. § 102(a)(l) Rejection of Claims 1-6
Issue 1
Appellants argue (App. Br. 4-10; Reply Br. 2-4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(a)(l) as being anticipated by Tsai
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses an image
sensor package that includes, inter alia, "a through-oxide via that extends
through the image sensor die and into the signal processing die, wherein the
through-oxide via electrically connects the signal processing die to the metal
structure," as recited in claim 1?
Analysis
Appellants contend:
[C]laim 1 recites a through-oxide via that extends through an
image sensor die and into a signal processing die. Tsai makes
no mention of a through-oxide via that extends through a first
die and into a second die, let alone a through-oxide via that
extends through an image sensor die and into a signal
processing die, as claimed. Tsai therefore also fails to show or
suggest "a through-oxide via that extends through the image
sensor die and into the signal processing die, wherein the
through-oxide via electrically connects the signal processing die
to the metal structure," as recited in claim 1.
App. Br. 8-9 ( emphasis added).
4
Appeal 2018-008276
Application 15/453,038
In response, the Examiner further explains that "Tsai in Fig[.] 7 and
,ioo 15 clearly discloses this feature." Ans. 13. However, contrary to the
Examiner's findings, we agree with Appellants' arguments (App. Br. 8-9)
and find, by a preponderance of evidence, and as shown below, Tsai's via,
represented by opening 270 in Fig. 7, does not extend through element 210
( or 220), which the Examiner had mapped to the claimed and recited "image
sensor die." Final Act. 4-5; See Tsai, Fig. 7.
212
.,_.1
217
'f_;
Fig. 7!
_2J(j
Ml
Mc
,30 MJ
Mn
"FIG[. ] 7 illustrate[ s a] diagrammatic cross-sectional side view[] of
one embodiment of a semiconductor device at [ an end-]stage[] of fabrication
according to the method of FIG. l." Tsai ,i 6.
Therefore, on this record, we find the Examiner has not shown
anticipation by Tsai of at least the contested limitation of claim 1.
Accordingly, we reverse the Examiner's§ 102 rejection of independent
5
Appeal 2018-008276
Application 15/453,038
claim 1, and dependent claims 2-6 which stand with claim 1. See Claim
Grouping, supra.
2. § 102(a)(l) Rejection of Claims 7-15
Issue 2
Appellants argue (App. Br. 10-14; Reply Br. 4-5) the Examiner's
rejection of claim 7 under 35 U.S.C. § 102(a)(l) as being anticipated by Tsai
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses an
integrated circuit package that includes, inter alia, "a first die," "a second
die attached to the first die," and "a via that extends through the first die and
into the second die and that electrically connects the first die to the second
die," as recited in claim 7?
Appellants contend Tsai fails to show or suggest "a first die" and "a
second die attached to the first die," as recited in claim 7. App. Br. 12-13.
Appellants also argue "Tsai makes no mention of a via that extends through
a first die and into a second die, let alone where the via electrically connects
the first and second dies, as claimed." App. Br. 13.
We agree with the Examiner's findings and broadest reasonable
interpretation of the claim terms.4 In reviewing the record, we are not
persuaded the Examiner's claim interpretation is overly broad or
unreasonable, because Appellants do not point to any limiting definition, in
the claim, or in the Specification, that would preclude the Examiner's
4 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
6
Appeal 2018-008276
Application 15/453,038
construction of the terms "die" and "via" (Ans. 10-11) and the reading of
these limitations on Tsai. See Ans. 11-13. We find the scope of the
construed and contested limitations broadly read on Tsai's device substrates,
layers and via (i.e., a Vertical Interconnect Access that forms an electrical
connection between layers in a physical electronic circuit that goes through
the plane of one or more adjacent layers).
We are not persuaded by Appellants' arguments because independent
claim 7 merely recites a first and second die in broad terms. We are also
unpersuaded by Appellants' arguments because the dies recited in claim 7
are interpreted as reading on any via that connects two dies. Therefore, we
find a preponderance of the evidence supports the Examiner's finding of
anticipation. Accordingly, we sustain the Examiner's rejection of
independent claim 7, and grouped claims 8, 10-15, which fall therewith.
See Claim Grouping, supra.
3. § 102(a)(l) Rejection of Claim 9
Issue 3
Appellants argue (App. Br. 14-16; Reply Br. 5) the Examiner's
rejection of dependent claim 9 under 35 U.S.C. § 102(a)(l) as being
anticipated by Tsai is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art discloses "[t]he
integrated circuit package defined in claim 8, wherein the second die
comprises signal processing circuitry," as recited in claim 9?
Appellants argue, "[ m Jerely providing interconnections is not the
same as performing signal processing. Tsai's interconnection structure is
7
Appeal 2018-008276
Application 15/453,038
therefore not the same as signal processing circuitry as alleged in the Office
Action." App. Br. 15.
The Examiner points out that Appellants have not defined the claim
term "signal processing circuitry" in the Specification or claims. The
Examiner, under a broad but reasonable interpretation, defines this term as
"the analysis, interpretation and manipulation of signals." Ans. 13-14.
The Examiner also concludes:
In ,ioo 10, Tsai discloses that the "additional circuitry and input/
output" which provides and operation environment for the
sensors and for supporting external communications with the
sensors. It is well known in the art that "operation environment"
involves processing of signals and therefore Examiner's
interpretation of Tsai's disclosure in ,ioo 14 is not unreasonable.
For these reasons, rejections of Claim 9 is reasonable and
should therefore be sustained.
Ans. 14.
We find Appellants have not pointed to any definition in their
Specification that would indicate the Examiner's interpretation is
inconsistent with their Specification. Moreover, Appellants do not point to
any evidence of record in support of their contentions, but instead merely
present attorney arguments. App. Br. 14-16, Reply Br. 5. We note attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).5
5 "Argument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
8
Appeal 2018-008276
Application 15/453,038
We also note Appellants' arguments focus on the purportedfunctional
differences between the device of claim 9 as compared to the functions
taught in the prior art instead of the structure, instead of structural
differences. Our reviewing court guides that the patentability of an
apparatus "depends on the claimed structure, not on the use or purpose of
that structure." Catalina Marketing Int'!. Inc. v. Coolsavings.com, Inc., 289
F.3d 801,809 (Fed. Cir. 2002); "[A] system claim generally covers what the
system is, not what the system does." Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
Therefore, on this record, we are not persuaded of error in the
Examiner's reliance on Tsai as disclosing claim 9, and we sustain the
Examiner's anticipation rejection of dependent claim 9.
REPLY BRIEF
To the extent the Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4l(b)(2)), which Appellants have not shown.
9
Appeal 2018-008276
Application 15/453,038
CONCLUSIONS
(1) The Examiner erred with respect to the anticipation rejection of
claims 1-6 under 35 U.S.C. § 102(a)(l) over the cited prior art of record,
and we do not sustain the rejection.
(2) The Examiner did not err with respect to anticipation rejection
of claims 7-15 under 35 U.S.C. § 102(a)(l) over the cited prior art of record,
and we sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-6.
We affirm the Examiner's decision rejecting claims 7-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED-IN-PART
10