Hans Hartung et al.

Patent Trials and Appeals Board

Aug 13, 2019

13930607 - (D) (P.T.A.B. Aug. 13, 2019)

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.
13/930,607 06/28/2013 Hans Hartung 1012-0603 /
2013P50844 US
8290
57579 7590 08/13/2019
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 Crescent Green
Suite 200
CARY, NC 27518
EXAMINER
ZARNEKE, DAVID A
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANS HARTUNG, JOHANNES UHLIG, and
CHRISTIAN DOMESLE
__________

Appeal 2018-008003
Application 13/930,607
Technology Center 2800
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, 5, 6, 8–11, and 21. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to humidity-resistant power modules.
(Spec. ¶ 1; claim 1).

1 The Appellants identify “Infineon Technologies AG” as the real party in
interest (App. Br. 2).
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Claim 1 is illustrative of the subject matter on appeal:
1. A power semiconductor module, comprising:
a base plate;
a substrate having a first metallized side attached to the
base plate and an opposing second metallized side;
a power semiconductor die attached to the second
metallized side of the substrate at a first side of the die;
a first plurality of electrical connections between the
second metallized side of the substrate and a second side of the
die opposing the first side of the die;
a housing attached to a periphery of the base plate so that
the die and the first plurality of electrical connections are
enclosed by the housing and the base plate;
a second plurality of electrical connections extending from
the second metallized side of the substrate through the housing
to provide external electrical connections for the power
semiconductor module; and
a parylene coating which prevents gases and humidity
from reaching the die, the first plurality of electrical connections
and the first metallized side of the substrate.
Appellants appeal the following rejection:
Claims 1, 2, 5, 6, 8–11, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Bayerer (US 2009/0039498 A1; publ. Feb. 12, 2009) in
view of Mizuno (US 7,906,822 B2; iss. Mar. 15, 2011).
Appellants’ arguments focus on the subject matter of claims 1, 6, 9,
and 10 (App. Br. 3–15). Any claim not separately argued will stand or fall
with our analysis of the rejection of independent claim 1.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Bayerer and
Mizuno with regard to claim 1 are located on pages 4 to 6 of the Final Office
Action.
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Appellants argue that the Examiner’s reason for modifying Bayerer’s
device to use Mizuno’s parylene coating is conclusory and based on
impermissible hindsight (App. Br. 4–5). Appellants contend that the
Examiner has not explained why Bayerer’s structure is inadequate and
would have required modification with Mizuno’s parylene coating (App. Br.
5). Appellants contend that the Examiner has not shown that Bayerer’s
structure provides insufficient protection from moisture such that using
Mizuno’s parylene coating provides protection from moisture to the device
(App. Br. 6). Appellants contend that Bayerer does not recognize space
constraint as an issue, so there is no valid reason for using Mizuno’s space
saving, moisture barrier parylene coating absent hindsight (App. Br. 7).
Appellants contend that Bayerer’s device is already covered in potting
material 51 and 52 and filler 7, so there is no space to add Mizuno’s
parylene coating to a surface (App. Br. 7). Appellants argue that with
Bayerer’s space in the housing completely filled by potting material and
filler, there would have been no motivation to improve upon Bayerer’s
device (App. Br. 8). Appellants contend that Bayerer’s complete filling of
the housing with potting material teaches away from the claimed invention
that uses a parylene coating (App. Br. 8).
Contrary to Appellants’ arguments, the Examiner finds that Bayerer
teaches in paragraph 40 that the potting materials 51 and 52 are optional
(Ans. 5). Accordingly, Appellants’ argument that Bayerer’s housing cavity
would have been completely filled with potting material is not persuasive.
Bayerer teaches that the function of the potting material is to insulate
electrically and stabilize the terminals and the printed circuit board (Bayerer
¶ 40). Bayerer teaches that the potting material provides insulation from the
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air or gas surrounding the module (id. ¶¶ 48, 49). In other words, Bayerer
recognizes that insulating the electronic circuits from the surrounding gas or
air is important. The Examiner finds that Mizuno teaches a space-saving
benefit by using the moisture blocking parylene coating to protect the
underlying circuit/electronic structure (Ans. 4). The Examiner finds that the
gas and moisture resistance are important to the longevity and performance
of any electrical device so as to avoid short-circuits and corrosion to the
metal layers (Ans. 4). The Examiner provides a credible reason for the
modification based on the teachings of Bayerer and Mizuno, not
impermissible hindsight.
Appellants contend that there is no evidence that Mizuno’s parylene
coating would be universally beneficial to any electrical device as the
Examiner finds (Reply Br. 3). The Examiner finds and Appellants do not
dispute specifically that gas and moisture resistance is important to the
longevity and performance of any electrical device (Ans. 3; Reply Br.
generally). The Examiner finds and Appellants do not dispute that a skilled
artisan knows that electrical devices contain metal layers that may corrode or
short circuit due to exposure to moisture and gases (Ans. 3; Reply Br.
generally). Mizuno teaches that the parylene coating provides needed
moisture blocking for a packaged electrical device (Mizuno col. 5, ll. 19–
25). Accordingly, it would have been obvious to one of ordinary skill in the
art to use Mizuno’s parylene moisture-barrier coating in place of Bayerer’s
potting material to both save space and insulate the electrical circuits from
moisture that is known to short circuit or corrode the metal in these circuits
as found by the Examiner.
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Appellants argue that Mizuno’s invention is directed to a micro
moveable element (MME) device that is different and distinct from
Bayerer’s power semiconductor module (App. Br. 10; Reply Br. 2).
Appellants contend that Mizuno’s parylene coating prevents moisture
contained within the packaging member from evaporating (Reply Br. 2).
Appellants argue that providing Mizuno’s parylene coating is not a
predictable use of prior art elements according to their established functions
(Reply Br. 2).
Appellants’ arguments are not persuasive because a person of
ordinary skill in the art is a person of ordinary creativity, not an automaton.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Mizuno discloses
that the invention is directed to a “packaged device in which a device chip
such as a micro movable element is sealed” (emphasis added) (Mizuno col.
1, ll. 15–17). In other words, Mizuno’s invention is not limited to micro
moveable elements solely. Rather, Mizuno’s invention includes packaged
devices with a sealed die. See, e.g., Mizuno claim 1. Similarly, Bayerer’s
semiconductor chips 40 are enclosed by housing sides 4d with a housing
cover 4 (Bayerer ¶¶ 40, 44; Fig. 1). Bayerer further teaches that the optional
potting material electrically insulates the printed circuit board on the chips
from contact with gas or air inside and surrounding the module 1 (id. ¶¶ 40,
48, 49). Therefore, Mizuno and Bayerer seek to protect the electronic
circuits from the gas and air surrounding the module. Mizuno’s parylene
coating blocks moisture transmission and saves space (Mizuno col. 5, ll. 19–
35). The Examiner finds and Appellants do not dispute that moisture is bad
for electronics because it corrodes the metal contacts and may cause
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short-circuits (Ans. 3). Therefore, based on the findings in this record, it
would have been obvious to use Mizuno’s parylene coating to protect
Bayerer’s sealed semiconductor die from moisture-related corrosion and
short circuits while saving critical space in semiconductor manufacture.

CLAIM 6
Claim 6 depends from claim 1 and recites “wherein the parylene
coating is applied directly to the second metallized side of the substrate, the
first plurality of electrical connections, the die and an exterior surface of the
housing.”
Appellants argue that the Examiner’s reasoning is conclusory and
Mizuno does not teach applying parylene to an exterior surface of the
housing (App. Br. 13).
Mizuno teaches, however, that a parylene coating may be applied to
the exterior of the packaged device (Mizuno col. 5, ll. 50–53; Fig. 8B).
Mizuno teaches that the external parylene coating prevents moisture external
to the packaged device from entering the package (id. at col. 5, ll. 50–53).
In light of these teachings, we find that the combined teachings of Mizuno
and Bayerer would have suggested placing an exterior coating around
Bayerer’s device to prevent external moisture from entering the device.

CLAIMS 9 & 10
Claim 9 depends from claim 1 and recites “wherein the parylene
coating is partly fluorinated.” Claim 10 depends from claim 1 and recites “a
primer applied to the substrate and the die, and wherein the parylene coating
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is applied to the primer, the first plurality of electrical connections and an
exterior surface of the housing.”
Regarding claim 9, Appellants argue that the Examiner’s reasoning is
conclusory and there is no analysis regarding why it would have been
obvious to fluorinate the parylene (App. Br. 13–14). Appellants contend
neither Mizuno nor Bayerer teach partially fluorinating a parylene (App. Br.
14).
The Examiner finds that partial fluorinating of parylene is
conventionally known and used in the art by skilled artisans for the
advantages provided by partially fluorinating (Ans. 7; Final Act. 7). In other
words, the Examiner finds via official notice that partially fluorinating a
parylene is well-known and would have been used by one of ordinary skill it
the art. Appellants do not dispute this finding other than to argue that
Mizuno does not teach partial fluorination (App. Br. 14). The Examiner
already finds that Mizuno does not teach this limitation, so Appellants’
arguments state what is already conceded by the Examiner. Appellants’
argument that there is no reasonable motivation provided regarding why a
person of ordinary skill in the art would have used partially fluorinated
parylene fails to address or timely challenge the Examiner’s finding that
partially fluorinated parylene is a conventionally known and used additive
for protective coatings (Final Act. 7).
Regarding claim 10, Appellants argue that the Examiner’s analysis
and reasoning is conclusory and the Examiner fails to provide any
particularized disclosure in Mizuno or Bayerer about using a primer and
there would have been no motive to use such a primer (App. Br. 15).
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The Examiner finds that Mizuno does not teach using a primer (Final
Act. 7). The Examiner takes official notice that it was known to use a
primer with Mizuno’s parylene coating because it is a conventionally known
and used additive for a protective coating (Final Act. 7). Although
Appellants state what the Examiner already finds (i.e., Mizuno does not
disclose using a primer), Appellants do not timely challenge the Examiner’s
official notice that primer is conventionally known and used in forming a
protective coating as a basis for the rejection (App. Br. 15, Reply Br.
generally). The preponderance of the evidence favors the Examiner’s
obviousness conclusion.
On this record, we affirm the Examiner’s § 103 rejection over Bayerer
in view of Mizuno.

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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED