Ex Parte ChiDownload PDFPatent Trial and Appeal BoardJan 11, 201613009612 (P.T.A.B. Jan. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/009,612 01119/2011 43859 7590 01/13/2016 SLATER & MATSIL, LLP, 17950 PRESTON ROAD, SUITE 1000 DALLAS, TX 75252 FIRST NAMED INVENTOR Shyh-AnChi 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. TSMl0-1170 1036 EXAMINER PATEL,MUKUNDBHAIG ART UNIT PAPER NUMBER 2835 NOTIFICATION DATE DELIVERY MODE 01/13/2016 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): docketing@slater-matsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHYH-AN CHI Appeal2014-002274 Application 13/009,612 Technology Center 2800 Before PETER F. KRATZ, GEORGE C. BEST, and WESLEY B. DERRICK, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1-20 of Application 13/009,612 under 35 U.S.C. § 103(a) as obvious. Final Act. (January 17, 2013). Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. 1 Taiwan Semiconductor Manufacturing Co., Ltd. is identified as the real party in interest. Br. 2. Appeal2014-002274 Application 13/009,612 BACKGROUND The '612 Application describes devices and methods for electrostatic discharge (ESD) protection of an integrated circuit in 3-dimensional (3D) integrated circuit (IC) packages. Spec. i-f 13. As the '612 Application explains: An integrated circuit (IC) connected to external ports is susceptible to damaging electrostatic discharge (ESD) pulses from the operating environment and peripherals. An ESD event is the transfer of energy between two bodies at different electrostatic potentials, either through contact or via an ionized ambient discharge (a spark). ESD protection devices attempt to divert this potentially damaging charge away from sensitive circuitry and protect the system from permanent damage. Id. at i-f 15. Claim 1 is representative of the '612 Application's claims and is reproduced below from the Brief' s Claims Appendix: 1. A device comprising: an interposer electrically connected to a supporting substrate; a configurable and patterned array of electrostatic discharge (ESD) protection cells inside the interposer; and an integrated circuit (IC) electrically connected to the interposer comprising a hard block, the hard block being electrically connected to at least one ESD protection cell of the array of ESD protection cells. Br. 15. 2 Appeal2014-002274 Application 13/009,612 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-3 and 5-13 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Knickerbocker2 and Gluschenkov. 3 Final Act. 2. 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Knickerbocker, Gluschenkov, and Lin. 4 Final Act. 6. 3. Claims 14--20 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Knickerbocker and Bernstein. 5 Final Act. 6. DISCUSSION Rejections 1and2. The Examiner rejected claims 1-3 and 5-13 as unpatentable over the combination of Knickerbocker and Gluschenkov. Final Act. 2. The Examiner also rejected claim 4 as unpatentable over the combination of Knickerbocker, Gluschenkov, and Lin. Id. at 6. Appellant argues for the reversal of these rejections on the basis of limitations present in independent claims 1 and 10. See Br. 8-11. We, therefore, local limit our analysis to claims 1 and 10. Dependent claims 2-9 and 11-13 will stand or 2 US 2011/0042795 Al, published February 24, 2011. 3 US 2011/0115082 Al, published May 19, 2011. 4 US 2010/0237386 Al, published September 23, 2010. 5 US 7 ,521,950 B2, issued April 21, 2009. 3 Appeal2014-002274 Application 13/009,612 fall with their respective parent independent claims. 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 is directed to a device comprising an interposer that contains "a configurable and patterned array of electrostatic discharge (ESD) protection cells." Similarly, claim 10 is directed to a 3DIC package comprising an interposer having an array of ESD protection cells that is "configurable and patterned." Appellant argues that the Examiner erred by finding that the combination of Knickerbocker and Gluschenkov describes or suggests such an array of the ESD protection cells. Br. 9--11. We begin by interpreting the language of claims 1 and 10. In particular, we construe the terms "array" and "patterned." During prosecution, the PTO gives the language of the proposed claims "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written descnpt10n contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). In normal use, the broadest relevant sense of the term "array" is "a large group, number, or quantity of people or things." See, e.g., Array I Define Array, DICTIONARY.COM UNABRIDGED http://dictionary.reference.com/browse/array. Although Appellant does not expressly argue for particular interpretation of the claim term "array," Appellant's arguments assume such a definition. See Br. 9--10. In particular, Appellant's arguments assume that the term "array" is defined as a "regular order or arrangement." See, e.g., Array I Define Array, DICTIONARY.COM UNABRIDGED http://dictionary.reference.com/browse/array. See Br. 9--10 (arguing that 4 Appeal2014-002274 Application 13/009,612 Knickerbocker does not describe an array because "[t]here is no teaching in Knickerbocker as [to] how the one or more ESD protection circuits are placed inside the interposer."). The term "array" can have such a definition in ordinary usage. See, e.g., Array I Define Array, DICTIONARY.COM UNABRIDGED http://dictionary.reference.com/browse/array. In this case, however, we see nothing in Appellant's Specification that compels us to adopt the narrower definition assumed in Appellant's arguments. The Specification does not contain any disclosure that is inconsistent with the broader definition. Furthermore, we decline the opportunity to read limitations from the embodiments described in the Specification into the claims. Accordingly, we conclude that the term "array" means "a large group, number, or quantity of people or things." Next, we tum to the claim term "patterned." After review of Appellant's Specification, we conclude that the broadest reasonable definition of this term that is consistent with the Specification is "forming a • , , 1 , , , .,., r'1 T'lo , , 1 I T""'\. I'- T'lo , , 1 consistent or cnaractensuc arrangement. .)ee rauernea I uqzne rauernea, DICTIONARY.COM UNABRIDGED http://dictionary.reference.com/browse/patterned. In rejecting claims 1 and 10, the Examiner found that Knickerbocker discloses "an array of electrostatic discharge (ESD) protection cells inside the interposer; (paragraph 0071 ESD devices (array has many devices) are integrated into interposer)." Final Act. 2. The cited portion of Knickerbocker describes exemplary embodiments as including one or more protective ESD devices that are integrated into at least one of the interposer's. See Knickerbocker i-f 71. In view of the interpretation of the term "array" adopted above, the Examiner correctly found that Knickerbocker describes an array of ESD protection cells. 5 Appeal2014-002274 Application 13/009,612 The Examiner further found that "Knickerbocker discloses ESD protection circuits in the interposer, but does not disclose a configurable and patterned interposer. However in analogues [sic, analogous] art of interposer, Gluschenkov teaches patterned and configurable interposer. (Fig. lB, paragraphs 0001 and 0029)." Final Act. 2-3; see also id. at 5. This finding is insufficient to support the Examiner's rejection for three reasons. First, the finding is inconsistent with the language of claims 1 and 10, which require that the array of ESD protection cells be patterned and configurable. As Appellant argues, see Br. 10-11, the combination of Gluschenkov and Knickerbocker suggests a configurable interposer containing ESD protection cells, and not a configurable array of ESD protection cells. Second, the Examiner has not adequately explained where and how Gluschenkov describes or suggests a patterned array of ESD protection cells. Paragraphs 1 and 23 of Gluschenkov are silent regarding the arrangement of the ESD protection cells within Gluschenkov's interposer, as the interposer depicted in Figure lB of Gluschenkov does not depict any ESD protection cells. Third, the Examiner has not provided an adequate explanation or reasoning to support the conclusion that the differences between Appellant's claimed invention as a whole and the prior art would have been obvious to a person of ordinary skill in the art. We, therefore, reverse the rejections of claims 1-13 of the '612 Application. Rejection 3. The Examiner rejected claims 14--20 as unpatentable over the combination of Knickerbocker and Bernstein. Final Act. 6. Appellant argues for reversal of this rejection based upon the limitations in 6 Appeal2014-002274 Application 13/009,612 independent claims 14 and 18. See Br. 12-13. Thus, we limit our discussion to claims 14 and 18. Dependent claims 15-17, 19, and 20 will stand or fall with their parent independent claim. 37 C.F.R. § 41.37(c)(l)(iv). Claim 14 is directed to a 3DIC package comprising a "first IC containing a hard block[] and [a] second IC containing an ESD protection cell electrically connected to the hard block." Similarly, claim 18 is directed to a method for forming a 3DIC package comprising the steps of "forming [an] electrical connection between ... the interposer and a plurality ofICs, wherein a first IC of the plurality of I Cs contains a hard block electrically connected to an ESD protection cell within a second IC of the plurality of I Cs." In rejecting these claims, the Examiner found that Knickerbocker discloses a 3DIC package comprising a 1st IC, a 2nd IC, and an interposer. Final Act. 7. The Examiner further found that Knickerbocker discloses that the l st IC is connected to an ESD circuit on the interposer, thus forming a hard block. Id.; see also Ans. 7. The Examiner also found that Bernstein discloses ESD protection located inside a 3D chip. Id. Based upon these findings the Examiner concluded that "it would have been obvious to a person in the [sic] ordinary skill in the art at the time of the invention to combine Knickerbocker and Bernstein by incorporating the teaching of Bernstein, into the system of Knickerbocker." Id. We reverse the rejections of claims 14 and 18 because the Examiner has not properly identified a prima facie case of obviousness. In particular, the Examiner has not explained where or how the combination of Knickerbocker and Bernstein describes or suggests the hard block located on 7 Appeal2014-002274 Application 13/009,612 the first IC and ESD protection cell on the second IC connected by an interposer. Because the Examiner has not properly established a prima facie case of obviousness, we reverse the rejection of claims 14--20. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1- 20 of the '612 Application. REVERSED cdc 8 Copy with citationCopy as parenthetical citation