Ex Parte Chi

Patent Trial and Appeal Board

Jan 11, 2016

13009612 (P.T.A.B. Jan. 11, 2016)

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.
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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.
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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
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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.
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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
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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
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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
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