International Business Machines Corporation

Patent Trials and Appeals Board

Nov 23, 2020

2020000972 (P.T.A.B. Nov. 23, 2020)

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.
15/591,611 05/10/2017 Jae-Woong Nah YOR920151175US02 1005
48063 7590 11/23/2020
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
GRAYBILL, DAVID E
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
nyoffice@rml-law.com
wel@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAE-WOONG NAH
____________

Appeal 2020-000972
Application 15/591,611
Technology Center 2800
___________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HASTINGS.

Opinion Dissenting-in-part filed by Administrative Patent Judge OWENS.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1 and 3–12. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Claims 1 and 8 are illustrative of the subject matter on appeal
(emphasis added to highlight key limitations in dispute):
1. A system to form solder bumps on a substrate, the system
comprising:
a solder ball fixture; and
a substrate;
wherein the solder ball fixture comprises a first array of
cavities and a second array of cavities formed in a surface of the
solder ball fixture;
a first set of preformed solder balls disposed in the first
array of cavities, and a second set of preformed solder balls
disposed in the second array of cavities;
wherein the substrate is disposed on the solder ball
fixture, wherein the substrate comprises a first array of contact
pads aligned to, and in contact with, the first set of preformed
solder balls disposed in the first array of cavities of the solder
ball fixture, and wherein the substrate comprises a second array
of contact pads aligned to, and in contact with, the second set of
preformed solder balls disposed in the second array of cavities
of the solder ball fixture:
wherein the first and second sets of preformed solder
balls differ in size, wherein the preformed solder balls of the
first set of preformed solder balls have a diameter D1, wherein
the preformed solder balls of the second set of preformed solder
balls have a diameter D2, wherein D2 is greater than D1;
wherein the first array of cavities and the second array of
cavities formed in the surface of the solder ball fixture are sized
and shaped such that top portions of each of the first and second
sets of preformed solder balls, which protrude from the first and
second arrays of cavities past the surface of the solder ball
fixture, are coplanar; and
a solder reflow tool configured to perform a solder reflow
process with the substrate disposed on the solder ball fixture
during the solder reflow process to heat the preformed solder
balls and bond the first set of preformed solder balls to the first
array of contact pads of the substrate and bond the second set of
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preformed solder balls to the second array of contact pads of the
substrate.

8. A substrate, comprising:
a first array of contact pads comprising a first array of
preformed solder balls bonded thereto;
a second array of contact pads comprising a second array
of preformed solder balls bonded thereto;
wherein the first array of preformed solder balls
comprises preformed solder balls having a first composition;
and
wherein the second array of preformed solder balls
comprises preformed solder balls having a second composition,
wherein the first and second compositions are different;
wherein the first array and the second array of preformed
solder balls form an array of solder balls having both the first
and second compositions of preformed solder balls interspersed
within the array of solder balls.

REJECTIONS2
Claims 8, 10, and 12 are rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Pang (US 2008/0003805 A1; published Jan. 3, 2008)(Final
Act. 3), or in the alternative, under 35 U.S.C. § 103 as being unpatentable
over Pang (Final Act. 6).
Claim 9 is rejected under 35 U.S.C. § 103 over the combined prior art
of Pang and Kurata (US 2003/0141342 A1; published July 31, 2003) (Final
Act. 7).

2 We will not address the objection to the Specification made by the
Examiner (Final Act. 2) as this objection should be decided by the Director
on petition, and is not appealable. See, e.g., MPEP §§ 706.01, 1201(9th ed.
Rev.08.2017 Jan. 2018).

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Claim 11 is rejected under 35 U.S.C. § 103 over the combined prior
art of Pang and Budd (US 7,780,063 B2; issued Aug. 24, 2010) (Final Act.
8).
Claims 1, 3, 4, 6, and 7 are rejected under 35 U.S.C. § 103 over the
combined prior art of Pang, Jomaa (US 2008/0054047 A1; published Mar. 6,
2008), and Budd (Final Act. 8–13).
Claim 5 is rejected under 35 U.S.C. § 103 over the combined prior art
of Pang, Jomaa, Budd, and Kurata (Final Act. 14).
ANALYSIS
After considering the evidence presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error in the § 103 rejections made by the Examiner. On the other
hand, we do not sustain the Examiner’s § 102 rejection of claims 8, 10 and
12.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). We sustain the Examiner’s
§ 103 rejections for substantially the reasons expressed in the Final Office
Action and the Answer, and we do not sustain the Examiner’s § 102
rejection.
We add the following primarily for emphasis.
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With respect to claim 8, Appellant makes one argument for both the
§§ 102 and 103 rejections, that is, Pang does not “specifically disclose or
fairly suggest” that its first and second array of solder balls are made of two
different materials and thus does not teach or suggest doing so as recited in
independent claim 8 (Appeal Br. 5, 6; see also Reply Br. 5, 6). The
Examiner relies upon Pang for its teaching of using solder balls that may
comprise “a SnAg or a SnAgCu alloy” for these rejections (Pang ¶ 23; Final
Act. 3, 5).
We will not sustain the Examiner’s § 102 rejection based on Pang as
Pang does not explicitly disclose that its first array of solder balls of one
size/diameter is of a different composition than its second array of solder
balls of another size/diameter.
However, it has been well settled that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972
F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom).
Appellant’s de facto argument that the Examiner has failed to
sufficiently explain how the applied prior art rendered claim 1 obvious is not
persuasive of error as Appellant fails to consider the applied prior art as a
whole and the inferences that one of ordinary skill would have made. Pang
explicitly discloses that the solder balls of different diameters may be
applied using “multiple solder delivery heads” (Pang ¶ 19). Additionally, as
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the Examiner points out, Pang discloses solder balls may be made of
different alloys. Pang ¶ 23. Pang does not expressly require the solder balls
to be of the same composition. One of ordinary skill would have readily
appreciated that different solder compositions may be used in the different
solder heads, and may be optimized for the different sized electrode pads
which predictably may be useful for at least slightly different purposes,
based at least on their cooperation with electrode pads of different diameters
on the microelectronic substrate of Pang.
Thus, Appellant’s argument falls short of showing reversible error in
the Examiner’s § 103 rejection of claim 8 based on Pang. As Appellant does
not present any further arguments with respect to dependent claims 9–12,
reversible error has not been shown in the rejections of these claims.
With respect to the rejection of claim 1, Appellant does not
specifically dispute the Examiner’s findings based on Pang and Budd
(Appeal Br. 7, 8). Rather, Appellant’s main argument is that the microball
delivery system of Jomaa is not a “solder ball fixture” that is “within the
context” of claim 1 (Appeal Br. 7), such that there is “no motivation to
combine the teachings” of the applied references (Appeal Br. 8). The
Examiner explains that, to the contrary, one of ordinary skill would have
reasonably viewed Jomaa’s microball delivery system 300 with its mask 304
as a solder ball fixture (Ans. 10). We agree with the Examiner that a solder
ball delivery system as taught in Jomaa is within the scope of a solder ball
fixture as recited in claim 1 as each function to deliver solder balls to a
substrate.
Consequently, a person of ordinary skill would have looked to
Jomaa’s teaching that it is useful to have the distal surfaces of different sized
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solder balls be coplanar surfaces for better delivery and placement of the
solder balls onto the substrate surface (Jomaa, e.g., claim 5, ¶¶ 3, 18; Ans.
11). See In re Keller, 642 F.2d 413, 425–26 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”); see also In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”) and In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.”).
Accordingly, no reversible error has been shown in the Examiner’s
obviousness determination of claim 1 that the use of solder balls of two
different diameters having coplanar distal surfaces as taught in Jomaa to
modify the solder balls of two different diameters of Pang would have been
within the skill and creativity of one of ordinary skill in the art.
Accordingly, we sustain the Examiner’s rejections of independent
claim 1, as well as all claims dependent thereon, noting that Appellant relies
upon the arguments made for claim 1 for all of its dependent claims.
The Examiner’s decision is affirmed.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 10, 12 102 Pang 8, 10, 12
8, 10, 12 103 Pang 8, 10, 12
9 103 Pang, Kurata 9
11 103 Pang, Budd 11
1, 3, 4, 6, 7 103 Pang, Jomaa, Budd 1, 3, 4, 6, 7
5 103 Pang, Jomaa, Budd, Kurata 5
Overall
Outcome
1, 3–12
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).
AFFIRMED

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OWENS, Administrative Patent Judge, dissenting-in-part.
I concur in the reversal of the rejection under 35 U.S.C. § 102 and the
affirmance of the 35 U.S.C. § 103 rejections as to claims 1 and 3–7. I dissent
from the affirmance of the 35 U.S.C. § 103 rejections as to independent
claim 8 and its dependent claims 9–12.
I need address only independent claim 8. That claim requires first and
second arrays of preformed solder balls having, respectively, first and
second compositions, “wherein the first array and the second array of
preformed solder balls form an array of solder balls having both the first and
second compositions of preformed solder balls interspersed within the array
of solder balls.”
The Examiner has the initial burden of establishing a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In
re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
Pang discloses (¶ 23):
[R]eflow may take place at temperatures above about 250 degrees
Centigrade. The 250 degrees Centigrade minimum reflow temperature
would for example apply to solder balls comprising a SnAg or a
SnAgCu alloy. The SnAg may comprise less than about 4% by weight
Ag, while the SnAgCu may comprise less than about 1% by weight
Cu and less than about 4% by weight Ag.

The Examiner concludes (Final Rej. 6–7):
[I]t would have been obvious to try the first and second compositions
are different because this would have been a known option within the
technical grasp of a person of ordinary skill in the art that would lead
to anticipated success, and:
"[T]he court erred in concluding that a patent claim cannot be
proved obvious merely by showing that the combination of
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elements was obvious to try .... The same constricted analysis
led the Court of Appeals to conclude, in error, that a patent
claim cannot be proved obvious merely by showing that the
combination of elements was 'obvious to try.' ... [A] person of
ordinary skill in the art has good reason to pursue the known
options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but
of ordinary skill and common sense .... [T]he fact that a
combination was obvious to try might show that it was obvious
under §103." KSR International Co. v. Teleflex Inc., 82
USPQ2d 1385 (U.S. 2007). See also, Pfizer Inc. v. Apotex Inc.,
82 USPQ2d 1852 (Fed. Cir. 2007); In re Kubin, 90 USPQ2d
1417 (Fed. Cir. 2009).

In addition, it would have been obvious to try the first and
second compositions are different because a person of ordinary skill
would be motivated to solve the problem of providing the first and
second compositions and there are a finite number (two) of readily
identified, predictable solutions; namely, the first and second
compositions are the same and the first and second compositions are
different; and:
[T]he court erred in concluding that a patent claim cannot be
proved obvious merely by showing that the combination of
elements was obvious to try .... The same constricted analysis
led the Court of Appeals to conclude, in error, that a patent
claim cannot be proved obvious merely by showing that the
combination of elements was "obvious to try." ... When there is
a design need or market pressure to solve a problem and there
are a finite number of identified, predictable solutions, [a]
person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense .... [T]he fact that a
combination was obvious to try might show that it was obvious
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under §103." (KSR International Co. v. Teleflex Inc., 82
USPQ2d 1385 (U.S. 2007)).

The Examiner relies upon KSR but provides no evidence of a design
need or market pressure to solve a problem and a finite number of identified,
predictable solutions of the problem such that a person of ordinary skill in
the art would have had good reason to pursue the known options within his
or her technical grasp. Nor does the Examiner provide evidence that Pang
would have led one of ordinary skill in the art to success in forming an array
of first and second arrays of preformed solder balls having, respectively, first
and second compositions, interspersed within the array. Pang merely
exemplifies two solder compositions having a minimum reflow temperature
of 250 ºC (¶ 23). Pang provides no suggestion to form an array of two
preformed solder ball arrays having, respectively, first and second
compositions, let alone suggest forming an array of interspersed first and
second preformed solder ball arrays, having, respectively, first and second
compositions.
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR, 550
U.S. at 418. The Examiner has not set forth the required apparent reason as
to claim 8. Accordingly, I dissent from the affirmance of the rejection under
35 U.S.C. § 103 of that claim and its dependent claims 9–12.