11716606 (B.P.A.I. Feb. 3, 2012)

Ex Parte Shibamoto

Board of Patent Appeals and InterferencesFeb 3, 2012

11716606 (B.P.A.I. Feb. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/716,606 03/12/2007 Masanori Shibamoto WN-3000 7220 21254 7590 02/03/2012 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER CHEN, XIAOLIANG ART UNIT PAPER NUMBER 2835 MAIL DATE DELIVERY MODE 02/03/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MASANORI SHIBAMOTO ____________ Appeal 2010-000252 Application 11/716,606 Technology Center 2800 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-3, 5, 7, 14, 16, and 22-30. Claims 4, 6, 8-13, 15, and 17-21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention is directed to the use of a joint board between an upper integrated circuit package and a lower integrated circuit package Appeal 2010-000252 Application 11/716,606 2 wherein the joint board exceeds the dimensions of the upper and lower packages so that underfill between the upper and lower packages will not leak or spread. Claim 1 is illustrative, with key disputed limitations emphasized: 1. A semiconductor device, comprising: a first package comprising a first semiconductor element; a second package for stacking over the first package, the second package comprising a second semiconductor element; and a joint board arranged between the first package and the second package, the joint board comprising: an outer periphery having a size that is greater than a size of an outer periphery of the first package and a size of an outer periphery of the second package; and an opening having a size that is greater than a size of a surface area of the first semiconductor element, wherein a space between the joint board and the first and second packages is filled with an underfill material, said underfill material extending from the outer peripheries of the first and second packages to the outer periphery of the joint board. (Emphasis added). The Examiner relies on the following as evidence of unpatentability: Rae US 2005/0151554 A1 Jul. 14, 2005 Hwang US 2006/0157843 A1 Jul. 20, 2006 Shinma US 2006/0170090 A1 Aug. 3, 2006 Appeal 2010-000252 Application 11/716,606 3 THE REJECTION The Examiner rejected claims 1-3, 5, 7, 14, 16, and 22-30 under 35 U.S.C. § 103(a) as unpatentable over Hwang, Shinma and Rae. Ans. 3-10.1 CONTENTIONS Regarding representative claim 1, the Examiner finds that Hwang discloses a semiconductor device having a first semiconductor element, a second semiconductor element for stacking over the first semiconductor element, and a joint board arranged between the first semiconductor element and the second semiconductor element which includes an opening greater in size that the first semiconductor element. The Examiner acknowledges that Hwang does not disclose: that the joint board has an outer periphery greater than the outer periphery of the first semiconductor element; and, wherein the space between the joint board and the first and second semiconductor elements is filled with underfill material that extends to the periphery of the joint board. Ans. 3-4. The Examiner cites Shinma, based upon a belief that Shinma discloses a joint board (72, Figure 3) which has an outer periphery which is greater that the periphery of integrated circuit packages 63 and 64 of Figure 3. Ans. 4. 1 Throughout this opinion, we refer to the Appeal Brief filed April 6, 2009, the Examiner’s Answer mailed June 19, 2009, and the Reply Brief filed August 24, 2009. Appeal 2010-000252 Application 11/716,606 4 Finally, the Examiner cites Rae noting that Rae teaches the use of underfill between two integrated circuit packages, which the Examiner believes extends from the outer periphery of the integrated circuit packages to the outer periphery of the joint board. Ans. 5. Appellant agrees with the Examiner that Hwang does not disclose “a space between the joint board and the first and second packages [which] is filled with an underfill material, said underfill material extending from the outer peripheries of the first and second packages to the outer periphery of the joint board” as set forth in independent claims 1 and 14, and argues that Rae fails to disclose this feature. App. Br. 6-8, Reply Br. 4-7. The issue before us, then, is as follows: ISSUE Under § 103, has the Examiner erred in rejecting claims 1-3, 5, 7, 14, 16, and 22-30 by finding that Hwang, Shinma and Rae collectively would have taught or suggested a semiconductor device having a first semiconductor element, a second semiconductor element for stacking over the first semiconductor element, and a joint board arranged between the first semiconductor element and the second semiconductor element which includes an opening greater in size that the first semiconductor element; wherein the joint board has an outer periphery greater than the outer periphery of the first semiconductor element; and, wherein the space between the joint board and the first and second semiconductor elements is Appeal 2010-000252 Application 11/716,606 5 filled with underfill material that extends to the periphery of the joint board? FINDINGS OF FACT (FF) We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. Hwang discloses a stacked ball grid array semiconductor package having a first semiconductor package and a second semiconductor package having an interposed printed circuit board between the semiconductor packages. The interposed printed circuit board is described as “a multi-layered substrate having an opening at the center.” Hwang, ¶¶[0024-0029], Figure 3. 2. Shinma discloses a stacked type semiconductor device which includes multiple stacked semiconductor devices (61-64) and multiple interposers (71-73). Shinma, ¶[0033], Figure 3. 3. Rae discloses a “flip chip package” having a semiconductor chip 1016 mounted between a substrate 1022 and a lid 1014 wherein a molding compound 1020 is applied to the chip side of substrate 1022 to provide lateral and subjacent support. Rae, ¶[0073], Figure 10. Appeal 2010-000252 Application 11/716,606 6 ANALYSIS We find that the Examiner’s analysis of Hwang is accurate. Hwang discloses a stacked semiconductor package which includes an interposed printed circuit board having an opening therein which is suggestive of Appellant’s “joint board.” (FF1). With regard to the teaching of Shinma, we find no suggestion that the interposers disclosed therein (FF2) include openings that might suggest their use as a “joint board;” however, Appellant does not dispute the Examiner’s finding with respect to Shinma -. Finally, regarding the teaching of Rae, we find that Rae discloses molding compound, or underfill, which is placed between two substrates, (FF3), and, we agree with the Examiner that placing underfill between three substrates is an obvious extension of that teaching. However, we find the Appellant’s arguments persuasive that there is no suggestion of having the underfill material extend “from the outer peripheries of the first and second packages to the outer periphery of the joint board” as required by the language of independent claims 1 and 14. Rae discloses the use of underfill or molding compound for lateral or subjacent support and clearly discloses that the underfill material terminates at the end of each of the disclosed substrates. We are therefore persuaded that the Examiner erred in rejecting independent claims 1 and 14 and dependent claims 2-3, 5, 7, 16, and 22-30, not separately argued with particularity. Appeal 2010-000252 Application 11/716,606 7 CONCLUSION The Examiner erred in rejecting claims 1-3, 5, 7, 14, 16, and 22-30 under § 103. ORDER The Examiner’s decision rejecting claims 1-3, 5, 7, 14, 16, and 22-30 is reversed. REVERSED pgc