Ex Parte Wang et al

Board of Patent Appeals and Interferences

May 31, 2012

11270012 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIAN WANG and GANG YU
____________

Appeal 2010-002165
Application 11/270,0121
Technology Center 2800
____________

Before JEAN R. HOMERE, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1-4, 6-13, and 15-26, which are all the claims

1 Application filed on Nov. 9, 2005 claiming benefit of US 60/687,350 filed
June 3, 2005. The real party in interest is E. I. du Pont Nemours and
Company.
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remaining in the application. Claims 5, 14, and 27 were canceled or
withdrawn during prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
Appellants’ invention relates to processes for forming electronic
devices, and more particularly to processes for forming electronic devices
that include reflowing conductive members. (Spec. 1:10-12.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A process for forming an electronic device comprising:
providing a first workpiece comprising an electronic component
that includes a first electrode and a first organic layer;
providing a second workpiece comprising a first conductor;
attaching the first workpiece to the second workpiece with a
nonconductive sealing material;
reflowing a conductive member, and wherein:
before reflowing, the conductive member is attached to the
second workpiece and is spaced apart from the first workpiece, and
during reflowing, the conductive member flows towards the first
workpiece; or
before reflowing, the conductive member is attached to the first
workpiece and is spaced apart from the second workpiece, and during

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed Mar. 10, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed June 26, 2009.
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reflowing, the conductive member flows towards the second
workpiece.
Rejections on Appeal
1. The Examiner rejects claims 1-4, 9, 11, 13, 15, 17, 18, 22, 24,
and 26 under 35 U.S.C. § 103(a) as being unpatentable over Wu (US Patent
No. 6,727,519 B1 Apr. 27, 2004) and Iwasaki (US Pat. Pub. 2003/0111742
A1 published June 19, 2003).
2. The Examiner rejects claims 6, 12, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Wu, Iwasaki, and Capote (US Patent
No. 6,566,234 May 20, 2003).
3. The Examiner rejects claims 7, 8, 20, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Wu, Iwasaki, and Yamazaki (US Pat.
Pub. No. 2004/0241980 A1 published Dec. 2, 2004).
4. The Examiner rejects claims 10 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Wu, Iwasaki, and Call (US Patent No.
6,120,885 Sep. 19, 2000).
5. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
being unpatentable over Wu and Iwasaki.
6. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over Wu, Iwasaki, and Lemke (US Patent No. 6,079,991
June 27, 2000).
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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ISSUE
Under § 103, did the Examiner err in finding that the combination of
Wu and Iwasaki would have taught or suggested “attaching the first
workpiece to the second workpiece with a nonconductive sealing material”
(emphasis added), within the meaning of independent claim 1, and the
commensurate limitation recited in independent claim 15?

ANALYSIS
Claims 1-4, 9, 11, 13, 15, 17, 18, 22, 24, and 26
Appellants contend, inter alia, the following with respect to Iwasaki:

Iwasaki teaches combination of a semiconductor chip
with a substrate, where an electrical connection is made using
ultrasonic thermal compression bonding, page 1, paragraph
[0002]. A nonconductive resin is used to fill a gap between
semiconductor chip and substrate, pages 1 and 2, paragraphs
[0007, 0010, 0033 and 0035]. Note that the mechanical and
electrical bonding is achieved through the electrical conductors
with the application of ultrasonic vibration, page 1, paragraph
[0006]. Hence, the nonconductive resin does not perform a
mechanical bonding function, but merely serves for reliability
of the device, page 1, paragraph [0005].
(Br. 5 (emphasis added).)
Appellants also contend:
The nonconductive resin in Iwasaki must be present in
conjunction with a dummy pattern, allowing the nonconductive
resin to effectively flow and reduce attenuation of the applied
ultrasonic waves and enhance reliability of electrical
connections. Page 5, paragraph [0065]. In the absence of the
dummy pattern, electrical connections and migration of the
nonconductive member are adversely impacted. Wu provides
no incentive or teaching of any of these features. No teaching,
suggestion or motivation fairly exists to combine such disparate
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teachings, and therefore, there is no reasonable expectation of
success in doing so.
(Br. 6)(emphasis added).
Thus, Appellants appear to contend that one skilled in the art would
not be motivated to combine Wu and Iwasaki because Iwasaki, which the
Examiner relies on to teach or suggest the limitation at issue, does not teach
a nonconductive resin that is used to bond the first workpiece to the second
workpiece, as claimed. (See Br. 6.) We disagree for the reasons discussed
infra.
We agree with the Examiner that Iwasaki teaches or suggests a
nonconductive resin that performs mechanical bonding. (Ans. 11.) The
Examiner contends inter alia:
Appellant's argument is not well founded since Iwasaki
plainly states that resin 7 has a bond strength between it and
substrate 5, specifically Iwasaki states "bond strength between
the nonconductive resin 7 and the circuit substrate 5" [0041].
Plainly resin 7 serves at least one bonding function.
Furthermore, as anyone of ordinary skill in the art will
appreciate, resin 7 will further have a bond strength between it
and chip 1 (or rather the coating 3 on chip 1) as well, as it is at
the very least sealing the two substrates, and is thus bonding the
lower substrate with the upper. The fact that this bonding may
not be sufficient bonding to suffice for Iwasaki's intended use
for the device and thus further compression bonding is later
carried out is irrelevant to the question of whether or not the
nonconductive resin indeed bonds the two substrates together.
(Id. (emphasis added).) We agree with the Examiner that Iwasaki teaches or
suggests a bonding function with at least one substrate. Therefore, we find
that Wu in combination with Iwasaki describe a combination of known
elements, and thus, render the claims obvious.
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“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” (Id.)
Because the teachings of Wu and Iwasaki were familiar elements at
the time of Appellants' invention, we are in accord with the Examiner’s
findings. The purported improvement represents, on this record, no more
than the predictable use of prior art elements according to their established
functions, and thus would have been obvious to one of ordinary skill in the
art. See KSR, 550 U.S. at 417. Further, we note that Appellants failed to file
a Reply Brief to rebut the findings and responsive arguments made by the
Examiner in the Answer.
Based on this record, Appellants have not shown the Examiner erred
in determining that the cited references would have taught or suggested
“attaching the first workpiece to the second workpiece with a nonconductive
sealing material,” within the meaning of representative claim 1, and
independent claim 15. Accordingly, we affirm the Examiner’s rejection of
claim 1 and 15 and claims 2-4, 9, 11, 13, 17, 18, 22, 24, and 26, not
separately argued with particularity (supra; Br. 5-6), which fall therewith.
Claims 6-10, 12, 16, 19-21, 23, and 25
Although dependent claims 6-8, 16, 20, 21, and 25 are grouped and
argued separately, we note that Appellants’ arguments follow the pattern of:
1) a characterization of the secondary reference, and 2) a conclusory
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statement regarding the combinability of the secondary reference with Wu
and Iwasake. (Br. 6-8.)
While Appellants recite the language of several exemplary dependent
claims, we note that a statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claims. See 37 C.F.R. § 41.37(c)(1)(vii).
We find Appellants’ conclusory arguments are insufficient to
persuade us of error in the Examiner’s findings of obviousness. This form
of argument is ineffective in demonstrating error in the Examiner’s findings
or legal conclusions to establish the patentability of the claims on appeal.
See Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI
Aug. 10, 2009) (informative); see also 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we affirm the Examiner’s rejections of claims 6-10, 12,
16, 19-21, 23, and 25.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-4, 6-13, and 15-26 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner rejection of claims 1-4, 6-13, and 15-26
under 35 U.S.C. § 103(a).

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).

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AFFIRMED

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