Ex Parte Fjelstad et al

Board of Patent Appeals and Interferences

Aug 11, 2009

09020647 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOSEPH FJELSTAD and
KONSTANTINE KARAVAKIS
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Appeal 2009-003367
Application 09/020,647
Technology Center 2800
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Decided: August 12, 2009
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 35-57, which are all of the pending claims. Claims 1-34 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed July 10, 2003), the Answer (mailed
September 11, 2003), and the Reply Brief (filed October 14, 2003) for the
respective details. Only those arguments actually made by Appellants have
been considered in this decision. Arguments which Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to a method of making of semiconductor
chip packages including a semiconductor chip and a compliant layer. More
particularly, the method relates to selectively forming elongated, flexible
bond ribbons over a compliant layer with the elongated bond ribbons
extending along the sloping edges of the compliant layer. See generally
Spec. 4:27–5:17.
Claim 35 is illustrative of the invention and reads as follows:
35. A method of making a compliant semiconductor chip package
comprising:
providing a semiconductor chip having a contact bearing surface
including a central region bounded by a peripheral region, wherein the
peripheral region of said contact bearing surface has chip contacts;
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providing a dielectric protective layer over the contact bearing surface
of said semiconductor chip, said dielectric protective layer having apertures
for said chip contacts;
providing a compliant layer over said dielectric protective layer and
over the central region of the contact bearing face of said semiconductor
chip, wherein said compliant layer has a substantially flat top surface, a
bottom surface that is attached to said dielectric protective layer and sloping
edges between the top surface and the bottom surface, wherein the sloping
edges of said compliant layer have a first curved transition region near the
top surface of said compliant layer and a second curved transition region
near the bottom surface of said compliant layer; and
selectively electroplating elongated bond ribbons atop said dielectric
protective layer and said compliant layer, wherein each said bond ribbon
electrically connects one of said chip contacts to an associated conductive
terminal disposed on the top surface of said compliant layer, and wherein
said elongated bond ribbons extend along the sloping edges of said
compliant layer and have a first curved region overlying the first curved
transition region of said compliant layer and a second curved region
overlying the second curved transition region of said compliant layer.

The Examiner’s Rejections
The Examiner relies on the following prior art references to show
unpatentability:
Chen US 4,671,849 Jun. 9, 1987
LeGrange US 4,962,985 Oct. 16, 1990
Kwon US 5,070,297 Dec. 3, 1991
Palagonia US 5,874,782 Feb. 23, 1999
(filed Aug. 24, 1995)
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Claims 35-38, 40-42, 45-54, and 57 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kwon or, in the alternative, under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kwon and Chen.
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwon, or the combination of Kwon and Chen, and further
in combination with LeGrange.
Claims 43, 44, 55, and 56 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kwon, or the combination of Kwon and Chen, and
further in combination with Palagonia.1

ISSUES
(i) Under 35 U.S.C. § 102(b), does Kwon have a disclosure which
anticipates the invention set forth in claims 35-38, 40-42, 45-
54, and 57?
The pivotal issue before us in making this determination is whether
Appellants have demonstrated that the Examiner erred in finding that Kwon
discloses a semiconductor chip package structure including a compliant
layer, which has sloping edges between the top and bottom surfaces with the
sloping edges having first and second curved transition regions near the top
and bottom surfaces.
(ii) Under 35 U.S.C. § 103(a), with respect to appealed claims 35-
57, would one of ordinary skill in the art at the time of the

1 Although the Examiner’s statement of the grounds of rejection (Ans. 11)
indicates that Palagonia is combined with Kwon, “as applied to claims 35-
38, 40-42, 45-54 and 57,” the statement does not include the alternative
combination of Kwon and Chen that was used in the rejection of claims 35-
38, 40-42, 45-54, and 57. As Appellants have provided no separate
arguments for the patentability of claims 43, 44, 55, and 56, however, we
treat the Examiner’s omission as harmless error.
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invention have found it obvious to combine Kwon with Chen
(claims 35-38, 40-42, 45-54, and 57) with the further separate
addition of LeGrange (claim 39) and Palagonia (claims 43, 44,
55, and 56) to render the claimed invention unpatentable?
The pivotal issue before us in making this determination is whether
Appellants have demonstrated that the Examiner erred in determining that
the combination of Kwon and Chen results in a semiconductor chip structure
in which elongated bond ribbons are electroplated on top of a dielectric
protective layer and a compliant layer.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Kwon discloses (Fig. 2; col. 4, l. 36–col. 5, l. 29) a
semiconductor chip package 14 including chip contacts 36, dielectric layer
34, and a compliant layer 32.
2. The compliant layer 32 is illustrated by Kwon (Fig. 2) as
having sloping edges between the top surface and bottom surface.
3. Kwon also discloses (col. 5, ll. 15-29) the inclusion of V-
shaped metal contacts 28 disposed through compliant layer 32 and dielectric
layer 34 to make contact with chip contacts 36.
4. Chen discloses (Fig. 4B; col. 1, ll. 5-21) a semiconductor
integrated circuit fabrication method for controlling the profile of an opening
etched in a layer of insulating material. The openings have a rounded profile
to minimize the possibility of defects formed in the overlying metal layer.
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PRINCIPLES OF LAW
1. ANTICIPATION
“It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim.” See In
re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann Maschinenfabrik
GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). “Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (citation
omitted).
2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C. §
103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
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level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
35 U.S.C. § 102(b) REJECTION
Appellants’ arguments in response to the Examiner’s anticipation
rejection, based on Kwon, of independent claims 35 and 45 assert that the
Examiner has not shown how each of the claimed features is present in the
disclosure of Kwon so as to establish a prima facie case of anticipation.
Appellants’ arguments (App. Br. 5-6; Reply Br. 1) focus on the contention
that, in contrast to the requirements of appealed independent claims 35 and
45, the compliant layer 32 formed over the dielectric layer 34 in the
semiconductor chip structure disclosed by Kwon (Fig. 2) does not have
curved transition regions near the compliant layer’s top and bottom surfaces.
We agree with Appellants. In addressing the language of independent
claims 35 and 45, the Examiner admits (Ans. 11) that Kwon does not
explicitly teach that the sloping edges at the top and bottom surfaces of
Kwon’s compliant layer 32 have curved transition regions but, nonetheless,
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takes the position (Ans. 4, 8-10) that the existence of such curved transition
regions would be inherent. We find no evidence in the disclosure of Kwon,
or elsewhere in the record before us, to support such a conclusion. For
example, Kwon’s Figure 2 illustration of the compliant layer structure 32
indicates the complete absence of any curved transition regions near the top
and bottom surfaces of the compliant layer 32. Similarly, we find no
indication in Kwon’s description (col. 4, l. 36–col. 5, l. 29) of the Figure 2
illustration, or the description of any of the other illustrated drawing figures,
that would support a conclusion as to the existence of curved transition
regions at top and bottom surfaces of compliant layer 32.
To establish inherency, evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference and would be recognized as such by persons of ordinary skill. In
re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citing Cont’l Can Co.
USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
“‘Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’” Cont’l Can, 948 F.2d at 1269 (quoting
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
In view of the above discussion, since all of the claim limitations are
not present in the disclosure of Kwon, we do not sustain the Examiner’s 35
U.S.C. § 102(b) rejection of independent claims 35 and 45, nor of claims 36-
38, 40-42, 46-54, and 57 dependent thereon.

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35 U.S.C. § 103(a) REJECTIONS
While we have not sustained the Examiner’s 35 U.S.C. § 102(b)
rejection of claims 35-38, 40-42, 45-54, and 57 based on Kwon, we do
sustain the Examiner’s alternative 35 U.S.C. § 103(a) rejection of these
claims. In this alternative rejection, the Examiner has added the curved
transition region teachings of Chen (Fig. 4B; col. 1, ll. 10-13; col. 3, ll. 52-
64) to Kwon.
Appellants’ arguments in response do not attack the Examiner’s
proposed combination of Kwon and Chen. Instead, Appellants direct
attention (App. Br. 5-6; Reply Br. 1) to the language of independent claims
35 and 45 which requires the electroplating of “elongated bond ribbons” on
top of the claimed dielectric layer and compliant layer. According to
Appellants (App. Br. 5-6; Reply Br. 1), the metal contacts 28 of Kwon,
identified by the Examiner (Ans. 4) as corresponding to the claimed
“elongated bond ribbons,” are not “elongated bond ribbons” since they are
actually conical in shape and are deposited to fill the via openings in
compliant layer 32.
We do not find Appellants’ arguments to be persuasive of any error in
the Examiner’s stated position, which finds (Ans. 8, 13) that the illustrated
relative height and width dimensions of the V-shaped contacts of Kwon
(Fig. 2) establish that such V-shaped contacts can be reasonably interpreted
as corresponding to the claimed “elongated bond ribbons.” It is noteworthy
that, while Appellants’ arguments (App. Br. 6; Reply Br. 1) attack Kwon’s
disclosed V-shaped contacts 28 as being merely conductors which fill via
openings in compliant layer 32, Appellants’ disclosed “ribbons” 170 also fill
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a via opening, i.e., in passivation layer 130 as illustrated, for example, in
Appellants’ Figure 1F.
Even further, while Appellants contend (App. Br. 6; Reply Br. 1) that
Kwon’s V-shaped contacts 28 have a conical shaped cross-section and,
therefore, cannot be considered to be “elongated bond ribbons” as claimed,
we would point out that Appellants disclose an embodiment (Fig. 6B, Spec.
16:15-16) in which the conductors 175 fill and terminate in concave areas
310 formed in compliant layer 140” to create “cup-like” areas on the top
surface 147” of the compliant layer 140”. It is instructive that, despite the
filling of the disclosed “cup-like” area of the compliant layer 140” by
conductors 175, such terminal portions of conductors 175 are nonetheless
described (Spec. 16:20) as “bond ribbon terminals.”
We also sustain the Examiner’s obviousness rejections of dependent
claims 39, 43, 44, 55, and 56 in which the LeGrange and Palagonia
references have been applied to the combination of Kwon and Chen to
address, respectively, the encapsulant layer material and dicing operation
features of the rejected claims. Appellants have made no separate arguments
for the patentability of these claims but, rather, rely on those arguments
presented with respect to the Examiner’s obviousness rejection based on the
combination of Kwon and Chen of independent claims 35 and 45, which
arguments we found to be unpersuasive as discussed supra.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellants have shown that the Examiner erred in rejecting claims 35-38,
40-42, 45-54, and 57 for anticipation under 35 U.S.C. § 102(b). We also
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conclude, however, that Appellants have not shown that the Examiner erred
in rejecting claims 35-57, all of the appealed claims, for obviousness under
35 U.S.C. § 103(a).

DECISION
Since we have sustained at least one of the Examiner’s rejections of
all of the appealed claims, the Examiner’s decision rejecting claims 35-57 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

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