Ex Parte Martinez et al

Patent Trial and Appeal Board

Mar 28, 2016

12427133 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/427,133 04/21/2009
16501 7590
Timothy M, Honeycutt
Attorney at Law
37713 Parkway Oaks Ln.
Magnolia, TX 77355
03/30/2016
FIRST NAMED INVENTOR
Liane Martinez
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.
AMDI:207\HON 6361
EXAMINER
WILLIS, TREMESHA S
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
timhoney@sprynet.com
timhoneycutt@earthlink.net
elizabethahoneycutt@earthlink.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte LIANE MARTINEZ, NEIL MCLELLAN, SILQUN LEUNG,
GABRIEL WONG 1
Appeal2013---009020
Application 12/427, 133
Technology Center 2800
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-3, 5-9, 11-16, 18-22, and 24--26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b)
1 The real party at interest is ATI Technologies ULC.
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A method of manufacturing, comprising:
coupling a semiconductor chip to a first side of a carrier
substrate, the carrier substrate including a second side opposite
the first side;
coupling together plural discrete passive devices;
coupling the plural coupled discrete passive devices to
the second side of the carrier substrate, the plural coupled
discrete passive devices including at least one first terminal
electrically coupled to the semiconductor chip and at least one
second terminal adapted to couple to a printed circuit board.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Searls US 2003/0218235 Al Nov. 27, 2003
THE REJECTION
Claims 1-3, 5-9, 11-16, 18-22 and 24--26 are rejected under 35
U.S.C. §102(a) as being anticipated by Searls.
ANALYSIS
As an initial matter, to the extent that Appellants have presented
substantive arguments for the separate patentability of any individual claims
on appeal, we will address them separately consistent with 37 C.F.R.
§ 41.37(c) (1) (iv) (2014).
Appeal2013-009020
Application 12/427, 133
With regard to claim 1, Appellants argue that Searls does not disclose
"coupling plural coupled discrete passive devices" to a side of a carrier for
the reasons provided on pages 18-22 of the Appeal Brief. Therein,
Appellants interpret "coupling together plural coupled discrete passive
devices" according to their analogy to Lego TM bricks discussed on pages 19-
20 of the Appeal Brief. On pages 21-22 of the Appeal Brief, Appellants
argue that the Examiner's claim interpretation is in error because of the
meaning of the term "array" referred to by the Examiner in the Answer. In
other words, it is Appellants' positon that an array is not the same as
"coupling the plural coupled discrete passive devices" as claimed.
In response, the Examiner states that Searls discloses a plurality of
capacitors 630A, 630B, and 630C that are arrayed beneath an electronic
component 626. Searls, Figure 6, para. [0049]. The Examiner states that
one of ordinary skill in the art would understand that an array of components
• • 1 • 1 • • • /• 1 • " ,.. .1 ' r-y-i1 is s1mp1y a groupmg ana JOmmg ~i.e., coupnngJ or me componencs. l ne
Examiner states that one of ordinary skill in the art would not consider a
capacitor array as being capacitors that are spaced apart with no
interconnecting link. Ans. 8-9. Hence, the Examiner believes that the
claimed phrase "coupling the plural coupled discrete passive devices"
encompasses interconnecting an array of capacitors. In the Reply Brief, we
do not find a specific response to this stated position. Reply Br. 2.
In interpreting claim language, the words of a claim must be given
their "plain meaning" unless the plain meaning is inconsistent with the
Specification. The ordinary and customary meaning of a term may be
evidenced by a variety of sources, including "the words of the claims
themselves, the remainder of the specification, the prosecution history, and
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Appeal2013-009020
Application 12/427, 133
extrinsic evidence concerning relevant scientific principles, the meaning of
technical term and the state of the art." Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005). In the instant case, Appellants' Specification
refers to items 290 and 295 shown in Figure 3 (below), as passive devices.
The Specification discloses that these devices may be capacitors, inductors,
resistors, or other devices and provided in "various numbers and sizes."
Spec. para. [0037]. Figure 3 is reproduced below to show how items 290
and 295 are coupled.
265 305
'
FIG. 3
Figure 3 is a sectional view of an embodiment of a semiconductor
chip package.
Appellants have not directed us to a disclosure that requires that the
phrase "coupling the plural coupled discrete passive devices" be construed
to mean that the devices are coupled in the manner discussed by Appellants
on pages 19 and 20 of the Appeal Brief. We thus are in agreement with the
Examiner's stated interpretation that the claim requires that the coupled
discrete passive devices are passive devices that are linked (e.g., electrically)
to each other, and therefore "coupling together plural coupled devices"
encompasses connecting discrete passive devices that are linked to each
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Appeal2013-009020
Application 12/427, 133
other. We therefore affirm the rejection of each of claims 1, 2, 3, and 5
(claims 2, 3, and 5 are grouped with claim 1 ).
With regard to claim 6 (claims 12, 19, and 25 are grouped with claim
6), claim 6 recites "coupling the plural coupled discrete passive devices at a
position further from a center of the second side of the carrier substrate than
the plural input/output structures." The Examiner finds that Searls discloses
"wherein the second side of the carrier substrate comprises plural
input/output structures" (pads, bumps 714/738/760, Figure 7), including "the
method comprising coupling the plural discrete passive devices at a position
further from a center of the second side of the carrier substrate than the
plural input/output structures." Ans. 4, 10, 30.
Appellants argue that plural passive devices 730A, 730B, and 730C
shown in Searls' Figure 7 are arranged in and around the center of interpose
628, rather than at a position further from a center of the second side of the
carrier substrate than the plural input/output structures. Appeal Br. 22.
Appellants' Figure 13 illustrates an embodiment whereby items 290"'
and 295"' are positioned farther away from area 827 (center of the second
side of the carrier) than items 850 (solder bumps). Figure 13 is reproduced
below.
FIG. 13
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Appeal2013-009020
Application 12/427, 133
Figure 13 is a sectional view of an embodiment of Appellants'
semiconductor chip package.
Searls' Figures 6 and 7 are reproduced below.
Figure 6 is an embodiment of a system according to Searls. Figure 7
is another embodiment of the system according to Searls.
In response, the Examiner states that Searls discloses capacitors 730A
and 730C of Figure 7 that are further from the center of the carrier substrate
than the plural input/output structures 738, 760 and corresponding pads. The
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Appeal2013-009020
Application 12/427, 133
Examiner also refers to Searls' Figure 6 in which capacitors 630A and 630C
are further from the center of the carrier substrate than the plural
input/output structures 638, 660 and corresponding pads. The Examiner
states that Appellants' claims do not recite coupling all of the plural discrete
passive devices at a position further from a center of the second side of the
carrier substrate than all of the plural input/output structures. Ans. 10.
In reply, Appellants argue that it is true that Appellants' claims do not
use the terms "all of." Reply Br. 3. However, Appellants argue that their
claims do recite that the plural coupled discrete passive devices are
positioned further from a center than the plural input/output structures.
Appellants point out that the Examiner previously argued (Ans. 4 and 8) that
the capacitors 630A, 630B and 630C constitute the plural coupled discrete
passive devices, the Examiner cannot now have it both ways. In other
words, Appellants do not believe the Examiner can group capacitors 630A,
630B, and 630C to constitute the plural coupled capacitors for claim 1
purposes, and thereafter argue for claim 6 purposes, that they (630A, 630B
and 630C) do not constitute the relevant grouping. 2 Id. We agree. We
therefore reverse the rejections involving claim 6 (as well as claims 12, 19,
and 25).
Regarding claim 7 (claims 13, 20 and 26 are grouped with claim 7),
Appellants argue that Searls does not disclose coupling at least one passive
device to the first side of the carrier substrate. Appeal Br. 22-25. The
Examiner disagrees and states that Figure 6 of Searls discloses an electronic
2 The same reasoning likewise applies to Figure 7 of Searls.
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Appeal2013-009020
Application 12/427, 133
component 626 being coupled to the first side of the carrier substrate 628.
Ans. 10. The Examiner states that it is inherent that the electronic
component 626 is coupled to the substrate via an electronic terminal (i.e.,
pad, land, bump, etc.), which is a passive device. Thus, the electronic
terminal is inherently coupled to the first side of the substrate 628. Ans. 10-
11.
In reply, Appellants submit that pads, lands, and bumps are not
recognized in the art as being passive devices. Reply Br. 3--4. We agree and
reverse the rejection with regard to claims 7, 13, 20, and 26.
Regarding apparatus claims 14 (claims 15, 16, and 18 are grouped
with claim 14) and 21 (claims 22 and 24 are grouped with claim 21 ),
Appellants present similar arguments as presented for claim 1. Appeal Br.
23-24. Appellants again refer to the Legoâ„¢ brick structures presented on
pages 19 and 20 of the Appeal Brief, and submit that capacitors 630A, 630B,
and 630C of Searls are not joined in this manner, and thus, are not coupled
together. For the same reasons that we affirmed the rejection of claim 1, we
also affirm the rejection of claims 14--16, 18, 21, 22, and 24.
With regard to independent claim 8 (claims 9 and 11 are grouped with
claim 8), Appellants present similar arguments as presented for claim 1
(Appeal Br. 23). For the same reasons that we affirmed the rejection of
claim 1, we also affirm the rejection of claims 8, 9, and 11.
DECISION
The rejection of claims 1, 2, 3, 5, 8, 9, 11, 14, 15, 16, 18, 21, 22, and
24 is affirmed.
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Appeal2013-009020
Application 12/427, 133
The rejection of claims 6, 7, 12, 13, 19, 20, 25, and 26 is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED-IN-PART
9