Ex Parte Shim et alDownload PDFPatent Trial and Appeal BoardMay 30, 201812777615 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 121777,615 127614 7590 Wong & Rees LLP FILING DATE 05/11/2010 06/01/2018 4340 Stevens Creek Blvd. Suite 106 San Jose, CA 95129 FIRST NAMED INVENTOR II Kwon Shim 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. 70027-1518 4727 EXAMINER YEMELYANOV, DMITRIY ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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@wongrees.com jyang@wongrees.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IL KWON SHIM, SENG GUAN CHOW, and HEAP HOE KUAN Appeal2017-006735 Application 12/777,615 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and MARK NAGUMO, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from the Examiner's decision finally rejecting claims 12, 15, 16, 18, 19, and 22. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Claims 1, 4, 5, 7-9, and 11 are also pending but have been withdrawn from consideration. Appeal2017-006735 Application 12/777,615 The claimed subject matter is directed to an integrated circuit packaging system. The claimed system comprises, inter alia, an interconnect having a first coined-surface, an encapsulation encapsulating the interconnect, and a joint having a second coined-surface adhered in direct contact with the first coined-surface of the interconnect. The joint includes a single structure having at-shape with a vertical portion directly connected to a horizontal portion. The first coined-surface of the interconnect is based on the vertical portion of the joint submerged in the interconnect. See, e.g., Fig. 1. Independent claim 12 is reproduced below from the Claims Appendix of the Amended Appeal Brief dated April 27, 2017 ("App. Br."). 12. An integrated circuit packaging system comprising: a substrate having a perimeter and a center portion; an interconnect attached to the substrate, the interconnect having a first coined-surface; an encapsulation encapsulating the interconnect; a joint above the encapsulation, the joint having a second coined-surface adhered in direct contact with the first coined- surface, wherein the joint includes a single structure having at- shape with a vertical portion directly connected to a horizontal portion, the interconnect having the first coined-surface is based on the vertical portion submerged in the interconnect, the first coined-surface is entirely directly on the vertical portion, and the first coined-surface includes a structure with a work- hardened surface at an acute angle below the top surface of the encapsulation; and an integrated circuit is attached to the center portion of the substrate. App. Br. 21. 2 Appeal2017-006735 Application 12/777,615 The Examiner maintains the following grounds of rejection on appeal: 2 (1) claim 15 under 35 U.S.C. § 112, second paragraph, as indefinite; (2) claims 12, 15, 16, 18, and 22 under 35 U.S.C. § 103(a) as unpatentable over Chow et al. 3 in view of Rothman et al.; 4 and (3) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Chow in view of Rothman, and further in view of Pagaila et al. 5 B. DISCUSSION 1. Rejection (1) Claim 12 recites that "the joint includes a single structure having at- shape" and claim 15, which depends from claim 12, recites that "the joint is 2 The Examiner also objected to an Amendment to the Specification filed July 9, 2015, under 35 U.S.C. § 132(a) as introducing new matter into the disclosure and required the Appellants to cancel the new matter. Final Office Action dated August 19, 2015 ("Final Act."), at 2. According to MPEP § 608.04( c) (9th ed., Rev. Aug. 2017), "[ w ]here the new matter is confined to amendments to the specification, review of the examiner's requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one .... " See also MPEP § 1201 (petitionable matters are not appealable). In this case, the Examiner did not enter a corresponding rejection of the claims under 35 U.S.C. § 112, first paragraph, based on the written description requirement. Therefore, the Examiner's requirement to cancel the new matter from the Appellants' Specification is a petitionable matter. 3 US 200710190690 Al, published August 16, 2007 ("Chow"). 4 US 2009/0065943 Al, published March 12, 2009 ("Rothman"). 5 US 2010/0033941 Al, published February 11, 2010 ("Pagaila"). 3 Appeal2017-006735 Application 12/777,615 a flat-shaped joint, a diamond-shaped joint, or a combination thereof." App. Br. 21. The Examiner finds that the Appellants describe three separate embodiments of a joint, i.e., t-shaped joint 120 illustrated in Figure 1, 6 flat shaped joint 320 illustrated in Figure 3, 7 and diamond-shaped joint 420 illustrated in Figure 4. 8 Ans. 3-5. 9 The Examiner explains that it is not clear how a joint can be flat shaped as recited in claim 15 and illustrated in Figure 3 and "at the same time" bet-shaped as recited in claim 12 and illustrated in Figure 1. Therefore, the Examiner concludes that claim 15 is indefinite. Ans. 6. The Appellants do not offer a response. A review of the Appellants' Specification 10 reveals that the term "flat shaped" is limited to describing joint 320 in Figure 3. Spec. i-f 55; see also Ans. 6 (citing Spec. i-f 55). Flat shaped joint 320 does not include a vertical portion, in contrast tot-shaped joint 120 that comprises vertical portion 126 extending from horizontal portion 130. Spec. i-fi-138-39; Fig. 1; see also Ans. 6. Thus, on this record, we agree with the Examiner that it is not clear how the t-shapedjoint recited in claim 12 can also be flat-shaped as recited in claim 15. The § 112, second paragraph, rejection of claim 15 is sustained. 6 Spec. i-f 38 (disclosing that 'joint 120 is shown to have at-shape"). 7 Spec. i-f 55 (disclosing that 'joint 320 is shown to be flat shaped"). 8 Spec. i-f 63 (disclosing that 'joint 420 is shown to have a diamond-shape"). 9 Examiner's Answer dated August 25, 2016. 10 See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) ("the definiteness of the [claim] language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art"). 4 Appeal2017-006735 Application 12/777,615 2. Rejections (2}--{3) The Examiner finds Chow discloses an integrated circuit packaging system comprising, inter alia, (I) substrate 102, (2) interconnect 108, 702 having a first coined-surface, 11 including a work-hardened surface, 12 (3) encapsulation 130, 706 encapsulating the interconnect, and (4) joint 212 13 having a second coined-surface. Final Act. 3--4. The Examiner finds Chow does not expressly disclose that: the joint includes a single structure having at-shape with a vertical portion directly connected to a horizontal portion, the interconnect having the first coined-surface is based on the vertical portion submerged in the interconnect, the first coined- surface is entirely directly on the vertical portion, and an acute angle below the top surface of the encapsulation [as recited in claim 12]. Final Act. 4 (emphasis added). The Examiner finds Rothman discloses the claimed elements missing from Chow, with the exception of the work-hardened surface being at an acute angle below the top surface of the encapsulation. Final Act. 4, 5. The Examiner concludes that it would have been obvious to one of ordinary skill 11 See Chow i-f 49 (disclosing that planarization of the interconnects may be accomplished, for example, with a coining process). 12 The Examiner concludes that "a work-hardened surface" as recited in claim 12 is a product-by-process limitation. Final Act. 5. The Appellants disclose that coining "induc[es] a plastic flow in the surface of the interconnects to form a coined-surface having a very fine grain structure providing a work-hardened surface while the deeper material in the interconnects retains its toughness and ductility." Spec. i-f 61 (reference numerals omitted). 13 Chow Figure 2, relied on by the Examiner, depicts joint 212 as a flat shaped joint, similar to the Appellants' flat shaped joint 320 illustrated in Appellants' Figure 3. See Final Act. 3. 5 Appeal2017-006735 Application 12/777,615 in the art to modify Chow's system to include the elements from Rothman "to prevent cracking of one or more of the solder joints and provide a reliable, cost-effective package substrate structure." Final Act. 4--5 (citing Rothman i-fi-1 5-6). As for the acute angle recited in claim 12, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to further modify Chow's system, and more specifically the coined-surface of interconnect 108, 702, "such that an angle is acute in order to arrest a crack in a solder joint." 14 Final Act. 5 (citing Rothman i-f 19). The Appellants argue that "the claim limitation of 'the interconnect having the first coined-surface is based on the interconnect encapsulated by the encapsulation and the vertical portion submerged in the interconnect' is not taught or suggested in Chow or Rothman." App. Br. 13 (emphasis added). In particular, the Appellants argue that Rothman's solder joint or interconnect 225 "is completely exposed and thus not covered by any encapsulation." App. Br. 13. As for Chow, the Appellants recognize that Chow discloses that interconnects 108 are within encapsulant 130. App. Br. 13. Nonetheless, the Appellants argue that Chow's solder joints 212 are completely on top of interconnects 108 and do not have a vertical portion 14 Claim 12 recites that "the interconnect having the first coined-surface is based on the vertical portion submerged in the interconnect, the first coined- surface is entirely directly on the vertical portion, and the first coined- surface includes a structure with a work-hardened surface at an acute angle below the top surface of the encapsulation." App. Br. 21 (emphasis added). We understand the acute angle recited in claim 12 to be that portion of the first coined-surface in direct contact with pointy tip 128 of vertical portion 126 oft-shaped joint 120 illustrated in Appellants' Figure 1. See Spec. i138. 6 Appeal2017-006735 Application 12/777,615 submerged in the interconnect as recited in claim 12 (and disclosed in Rothman). App. Br. 13-14. The Appellants' arguments are not persuasive of reversible error. It is well-settled that one cannot show nonobviousness by attacking the references individually, as the Appellants have done, where, as here, the rejection is based on a combination of references. In re Keller, 642 F .2d 413, 426 (CCPA 1981). In this case, the Examiner relies on Chow to show an encapsulation encapsulating the interconnect and an interconnect having a first coined-surface. The Examiner relies on Rothman to show a joint having at-shape with a vertical portion directly connected to a horizontal portion, wherein the joint is submerged in an interconnect. 15 Thus, it is the combination of Chow and Rothman, and more specifically the replacement of Chow's flat shaped joint with Rothman's t-shapedjoint, that results in "an encapsulation encapsulating the interconnect" and the first coined-surface of the interconnect "based on the vertical portion [of the joint] submerged in the interconnect" as recited in claim 12. See App. Br. 21. The Appellants also argue that "the interconnect having the first coined-surface based on the interconnect encapsulated by the encapsulation and the vertical portion submerged in the interconnect has been discovered to provide improved reliability." App. Br. 14. 15 The Examiner also finds Rothman discloses that the interconnects may be encapsulated in an encapsulant. Ans. 10-11 (citing Rothman i-f 22). In particular, Rothman discloses that "[a] method embodiment may further include providing an underfill material between the substrate and the carrier (not shown)." Rothman i-f 22. 7 Appeal2017-006735 Application 12/777,615 The Appellants, however, do not direct us to any credible evidence showing that improved reliability is an unexpected result of the claimed invention or is the solution to a long-felt need in the art. See In re Schulze, 346 F.2d 600, 602 (CCP A 1965) ("Argument in the brief does not take the place of evidence in the record."). In that regard, the Examiner finds, and the Appellants do not dispute, that Rothman teaches that at-shaped joint provides a reliable structure. Final Act. 4--5 (citing Rothman i-fi-1 5---6); see also Rothman i1 6. For the reasons set forth above, the § 103(a) rejection of claim 12 is sustained. The Appellants indicate that dependent claims 15, 16, 18, 19, and 22 stand or fall with the patentability of claim 12. App. Br. 18, 19. Therefore, the§ 103(a) rejection of claims 15, 16, 18, and 22 based on the combination of Chow and Rothman and the§ 103(a) rejection of claim 19 based on the combination of Chow, Rothman, and Pagaila also are sustained. C. DECISION The Examiner's decision 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation