Ex Parte 6387499 et al

Board of Patent Appeals and Interferences

Sep 29, 2010

95000105 (B.P.A.I. Sep. 29, 2010)

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.
95/000,105 08/17/2005 6387499 0149-053349 8686
28289 7590 09/30/2010
THE WEBB LAW FIRM, P.C.
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/30/2010 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
____________

HITACHI METALS, LTD.
Requester and Respondent

v.

SENJU METAL INDUSTRY CO., LTD.
Patent Owner and Appellant
____________

Appeal 2010-008209
Reexamination Control 95/000,105
Technology Center 3900
Patent No. 6,387,499
____________

Before MICHAEL P. TIERNEY, RICHARD M. LEBOVITZ, and
SCOTT R. BOALICK, Administrative Patent Judges

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.
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Patent owner Senju Metal Industry Co., Ltd. appeals under 35 U.S.C.
§ 134(b) and 35 U.S.C. § 315(a) from a rejection of claims 2 and 7-9
(Amended Appeal Brief filed on May 29, 2009, hereinafter "App. Br.";
Right of Appeal Notice, hereinafter "RAN," mailed September 29, 2008).2
Third-Party Requester Hitachi Metals, Ltd. urges that the Examiner's
decision must be affirmed (Respondent's Brief filed on February 6, 2009,
hereinafter "Resp. Br.").3 We have jurisdiction under 35 U.S.C. §§ 134
and 315.
We affirm.
STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent No.
6,387,499 (the ‘499 patent), assigned Reexamination Control
No. 95/000,105, was filed on August 17, 2005, by Jiawei Huang of J.C.
Patents on behalf of Third-Party Requester Hitachi Metals, Ltd.
The ‘499 patent, entitled “Coated Solder Spheres and Method For
Producing the Same,” issued May 14, 2002, to Daisuke Sohma and Takahiro
Roppongi, based on Application No. 09/545,061, filed April 7, 2000.
The ‘499 patent is said to be assigned to Senju Metal Industry Co.,
Ltd., said to be the real party in interest.

2 Claims 4-6 have been confirmed as patentable and claims 1 and 3 have
been cancelled.
3 Although the Requester filed a Notice of Cross Appeal on November 11,
2008 and another Notice of Cross Appeal on May 20, 2010, Requester has
not presented any arguments in their Brief with respect to the Examiner's
decision to confirm claims 4-6.
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Appellant’s invention relates to solder spheres having a substantially
uniform coating of a lubricant selected from an aliphatic hydrocarbon
lubricant, a higher fatty alcohol or acid lubricant, a fatty acid amide
lubricant, a metal soap lubricant, a fatty acid ester lubricant, a fluoroplastic
lubricant, a silicone lubricant, and a combination thereof. (Abstract.)
The original patent claims were amended during the reexamination
proceedings. Claims 2 and 7 are exemplary (underlining and bracketing
show claim amendments):
2. [The solder spheres according to claim 1] Solder spheres having
a substantially uniform coating consisting of a lubricant on the surfaces
thereof, wherein the lubricant is selected from the group consisting of an
aliphatic hydrocarbon lubricant, a higher fatty alcohol or acid lubricant, a
fatty acid amide lubricant, a metal soap lubricant, a fatty acid ester lubricant,
a fluoroplastic lubricant, a silicone lubricant, and a combination thereof.

7. A substrate for mounting an electronic component, said
substrate having solder bumps formed from the solder spheres according to
[claim 1] claim 2 on the surface thereof.

Claim 2 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Taylor (U.S. Patent 4,298,407).
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Taylor and King (U.S. Patent 5,789,068).
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Wydro (U.S. Patent 4,380,518).
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Wydro and King.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Hanawa (U.S. Patent 5,885,369) and King.
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Claim 7 stands rejected under 35 U.S.C. § 102(e) as being anticipated
by King, or in the alternative, stands rejected under 35 U.S.C. § 103(a) as
being obvious over King.
ISSUES
§ 102 Rejection – Taylor
With respect to independent claim 2, Appellant argues that Taylor
does not teach solder spheres having a substantially uniform coating
consisting of a lubricant. (App. Br. 6-11; see also Rebuttal Br. 3-4.) In
particular, Appellant argues that Taylor does not disclose solder spheres
(App. Br. 6-9) and that the flux of Taylor is not a lubricant (App. Br. 9-11).
The following issue is presented:
Does Taylor teach solder spheres having a substantially uniform
coating consisting of a lubricant?
§ 103 Rejection – Taylor/ King
With respect to product-by-process claim 7, Appellant argues that the
combination of Taylor and King does not teach or suggest “said substrate
having solder bumps formed from the solder spheres according to claim 2.”
(App. Br. 12; see also Rebuttal Br. 5-6.) In particular, Appellant argues that
“the Taylor patent does not disclose solder spheres at all, much less solder
spheres having a substantial uniform coating of a lubricant.” (App. Br. 12.)
Appellant also argues that “there is no articulated rationale for combining
the teachings of these two references.” (App. Br. 12.)
The following issues are presented:
1. Does the combination of Taylor and King teach or suggest the
substrate product of claim 7?
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2. Has the Examiner improperly combined the teachings of Taylor
and King?
§ 103 Rejection – Wydro
With respect to independent claim 2, Appellant argues that Wydro
does not teach or suggest “[s]older spheres having a substantially uniform
coating consisting of a lubricant.” (App. Br. 14-16; see also Rebuttal Br. 6.)
In particular, Appellant argues that “[t]he solder spheres of Wydro . . . do
not contain a coating at all, much less a substantially uniform coating.”
(App. Br. 14.)
The following issue is presented:
Does Wydro teach or suggest “[s]older spheres having a substantially
uniform coating consisting of a lubricant”?
§ 103 Rejection – Wydro/King
With respect to product-by-process claim 7, Appellant argues that the
combination of Taylor and King does not teach or suggest the claimed
substrate product. (App. Br. 17.) In particular, Appellant argues that “the
Wydro patent does not disclose solder spheres having a coating at all, much
less solder spheres having a substantially uniform coating consisting of a
lubricant.” (App. Br. 17.)
The following issue is presented:
Does the combination of Wydro and King teach or suggest the
substrate product of claim 7?
§ 103 Rejection – Hanawa/King
With respect to product-by-process claim 7, Appellant argues that the
combination of Hanawa and King does not teach or suggest the claimed
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substrate product. (App. Br. 18-19.) In particular, Appellant argues that
“the Hanawa patent is not directed to the production of solder balls” and “the
combination of the references provides no rationale for producing a substrate
for mounting electronic components where the substrate has solder bumps
that are formed from the solder spheres.” (App. Br. 19.)
The following issues are presented:
1. Does the combination of Hanawa and King teach or suggest the
substrate product of claim 7?
2. Has the Examiner improperly combined the teachings of Hanawa
and King?
§ 102/§103 Rejection – King
With respect to product-by-process claim 7, Appellant argues that
King does not teach or suggest the claimed substrate product. (App. Br. 19-
20.) In particular, Appellant argues that the “[t]he King patent relates to
solder spheres that are used in the manufacture of BGA packages, where the
solder spheres are coated with a layer of parylene . . . which is not a
lubricant coating.” (App. Br. 20.)
The following issue is presented:
Does King teach or suggest the substrate product of claim 7?
FINDINGS OF FACT
Taylor
1. Taylor describes “[t]in alloy solder powder compositions comprising
finely divided particles of the alloy coated with a thin continuous
layer of organic flux.” (Abstract; see also col. 2, ll. 59-67.) Such
alloys include “tin/lead, tin/bismuth, and tin/silver in finely divided
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form.” (Col. 3, ll. 19-21.) The solder powder can be applied to a
substrate in either a particulate or paste form. (Col. 6, ll. 56-57.)
2. In the embodiment of “Example IX,” which uses the bead milling
process of “Example I” (col. 8, l. 32; col. 7, l. 22), a 325 mesh
spherical tin alloy powder (i.e., 95% Sn/5% Ag) (col. 8, ll. 30-33) was
treated with succinic acid (col. 7, ll. 22-23). From “Example I,” the
tin alloy powder was treated in a one quart ceramic jar mill containing
400 milliliters of glass beads (6 millimeter diameter), in which 200
grams of tin alloy power and 1 gram of acid were milled for one hour.
(Col. 6, ll. 63-66.) “Example VII” illustrates the advantage of bead
milled spherical and irregular powders over those cleaned by
conventional techniques. (Col. 8, ll. 1-7; TABLE I.)
3. In the embodiment of “Example XI,” a 400 mesh irregular tin alloy
powder (i.e., 62% Sn/32% Pb/2% Ag) was bead milled with either
salicylic, phthalic, stearic or isophthalic acids. (Col. 8, ll. 43-48;
“TABLE II.”) TABLE II indicates that, when stearic acid is used, the
“extent of solder balling” is moderate and the “metal retention value"
is 74%. By comparison, TABLE II indicates that, when each of the
other three listed acids are used, the “extent of solder balling” is slight
and the “metal retention value” is 98%.
King
4. King describes “a solder preform coated with a predetermined
thickness of parylene which physically and chemically protects the
perform.” (Abstract.) “Applications . . . [include] solder spheres
(50 µm-1 mm diameter) used in the manufacture of Ball Grid Array
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(BGA) packages.” (Col. 1, ll. 15-17.) A Parylene E coating with a
melting point of about 180°C is preferable. (Col. 3, ll. 39-41.)
5. In one example, both coated and uncoated spheres were used to form
a BGA substrate with gold pads. (Col. 7, ll. 11-13.) “A water soluble
RMA flux, eutectic alloy, solder paste was used to solder the alloy
spheres to the pads on the substrate.” (Col. 7, ll. 13-15.) The
substrate was reflowed in a belt oven above 183°C for 46 seconds in a
nitrogen atmosphere. (Col. 7, ll. 14-17.) In all instances, the spheres
reflowed and formed a good metallurgical bond with the substrate.
(Col. 7, ll. 17-19.) Parylene coated spheres have a blue color (col. 7,
ll. 4-6), however, after reflow the color of the spheres “returned to a
bright gloss silver appearance” (col. 7, ll. 21-22). Uncoated spheres
are silver (col. 7, ll. 6-10).
Wydro
6. Wydro describes “[a] method of making solder spheres having non-
oxidized surfaces by introducing solder into a flux composition
comprising an activator and an antioxidant.” (Abstract.) In the
“Background of the Invention” section, one application disclosed for
solder spheres is in “soldering electronic devices such as chip
carriers.” (Col. 1, ll. 25-26.)
7. In a preferred embodiment, “a metal such as solder is made molten
and then extruded into a liquid flux composition maintained at
ambient temperature” to form “[u]niformly shaped and sized
spheres.” (Col. 2, ll. 5-9.) An apparatus for producing metal spheres
includes a chamber 10 for melting and holding a low melting
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temperature metal 12 (col. 2, ll. 23-24; fig. 1) and a receptacle 20 to
hold a liquid flux composition 26 (col. 2, ll. 29-30; fig. 1). The liquid
flux composition 26 is maintained at a temperature lower than the
temperature of the low melting temperature metal 12. (Col. 2,
ll. 30-34.) One example of the liquid flux composition 26 is
pentaerythritol tetraacetate. (Col. 3, l. 56, ll. 39-41.)
8. The chamber 10 includes nozzles 18 for injecting the low melting
temperature metal 12 into the receptacle 20 using pressurized air.
(Col. 2, ll. 38-44; fig. 1.) Metal spheres 36 begin to form when the
low melting temperature metal 12 contacts the liquid flux
composition 26. (Col. 2, ll. 44-45.) “The spheres 36 can be washed
and stored in airtight containers or stored in containers having the flux
composition therein until ready for use.” (Col. 2, l. 67 to col. 3, l. 1.)
Hanawa
9. Hanawa describes “a solder powder which comprises solder particles
having a protective layer formed thereon composed of a metal salt of
adipic acid.” (Col. 1, ll. 8-10.) Applications for such solder powder
include the micro-soldering of electronic circuits, including mounting
technology. (Col. 1, ll. 19-21, 15-16.) “[A]dipic acid has a boiling
point of 206° C, which is lower than the soldering temperature.”
(Col. 4, ll. 15-17.) In the “Background of the Invention” section,
Hanawa describes “a solder powder . . . produced in an atmosphere of
an inert gas, a technique wherein the solder particle is made as
spherical as possible to decrease the surface area and a technique
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wherein fine solder particles which are more susceptible to the
oxidation are eliminated.” (Col. 1, ll. 42-45.)
ANALYSIS
§ 102 Rejection – Taylor
The Examiner found that the spherical tin alloy powder from
“Example IX” of Taylor corresponds to the claimed “[s]older spheres.”
(Ans. 7, 13-14; see FF 2.) The Examiner also found that the stearic acid flux
from “Example XI” of Taylor corresponds to the claimed “lubricant.”
(Ans. 7, 14-15; see FF 3.) The Examiner concluded that claim 2 was
anticipated by Taylor. (Ans. 7.) We agree with the Examiner.
Taylor describes a tin alloy solder powder composition comprising
finely divided particles of tin alloy coated with a thin substantially
continuous layer of an organic flux. (FF 1.) Taylor also discloses two
shapes of particles: spherical and irregular. (FF 2, 3.) As shown in
Examples VII and IX, Taylor teaches that spherical particles, like irregular
shaped particles, are suitable for use in the invention. Example IX of Taylor
teaches a spherical tin alloy powder treated with an organic acid flux.
(FF 2.) Example XI of Taylor teaches an irregular tin alloy powder treated
with either a salicylic, phthalic, stearic or isophthalic acid flux. (FF 3.) In
Example XI, stearic acid is shown to work for its intended purpose. (See
FF 3.) Although Example XI employed irregular powders with the stearic
acid flux, as opposed to spherical powders, one skilled in the art would have
understood from Taylor that the genus of particle shapes was a genus of two:
spherical or irregular. (FF 2, 3). In other words, one skilled in the art
reading Example XI would have understood Taylor to describe stearic acid
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flux with spherical particles because the small genus of two shapes (irregular
or spherical) anticipates the species (spherical shapes with stearic acid). In
re Petering, 301 F.2d 676 (CCPA 1962) (Prior art reference disclosing
limited genus of 20 compounds rendered every species within the genus
anticipated). We further agree with the Examiner (Ans. 7, 14-15) that stearic
acid is a lubricant as defined by the claims.
Thus, we agree with the Examiner that Taylor anticipates because it
describes solder spheres having a substantially uniform coating of a
lubricant, as recited in claim 2.

§ 103 Rejection – Taylor/ King
Claim 7
We are not convinced by Appellant’s arguments (App. Br. 12; see
also Rebuttal Br. 5-6) that the combination of Taylor and King does not
teach or suggest the substrate product of claim 7 and that the Examiner
improperly combined Taylor and King.
The Examiner found that Taylor teaches or suggests all the features of
product-by-process claim 7 except “[a] substrate for mounting an electronic
component, said substrate having solder bumps formed from the solder
spheres.” (Ans. 7.) The Examiner cited King for the disclosure of a ball
grid array (BGA) with solder spheres reflowed to the gold pads of a
substrate. (Ans. 7; FF 5.) The Examiner concluded that claim 7 would have
been obvious in view of the teachings of Taylor and King. (Ans. 8.) We
agree with the Examiner.
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As discussed, Taylor describes tin alloy solder powder compositions
coated with a thin continuous layer of an organic flux. (FF 1.) In “Example
IX,” Taylor teaches treating a spherical tin alloy powder with succinic acid.
(FF 2.) In “Example XI,” Taylor teaches treating an irregular tin alloy
powder with stearic acid (i.e., the claimed “lubricant.”) (FF 3.) According to
Taylor, the tin alloy powder of “Example IX” and “Example XI” can be
applied to a substrate in particulate form. (FF 1.) King relates to parylene
coated or uncoated solder spheres reflowed to the gold pads of a ball grid
array (BGA) substrate. (FF 5.)
As previously discussed, Taylor teaches a spherical powder with a
stearic acid coating. In addition, combining the two examples of Taylor is
no more than the simple substitution of Taylor’s known spherical tin alloy
powder from Example IX for Taylor’s known irregular tin alloy powder
from Example XI, with no unexpected results having been shown by
Appellant. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
This combination of Example IX and Example XI would result in a spherical
tin alloy powder with a stearic acid coating.
Moreover, combining Taylor with King is no more than the simple
substitution of Taylor’s known spherical tin alloy coated with stearic acid for
King’s parylene coated or uncoated solder spheres, with no unexpected
results having been shown by Appellant. See id.
Appellant argues that “solder spheres” exclude the spherical powder
of Taylor. (Rebuttal Br. 2-4.) In particular, Appellant argues that “[s]older
spheres for producing solder bumps in a BGA (Ball Grid Array) are
necessary relatively round and smooth, as well as relatively similarly sized
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in a particular sample.” (Rebuttal Br. 3.) However, such features relating to
the shape, size and surface characteristics of the “solder spheres” are not
recited in the claims. Furthermore, the claim term “solder spheres” is broad
enough to encompass Taylor’s spherical tin alloy powder (FF 2-3).
Appellant has not provided a definition that would compel us to interpret the
claim more narrowly.
Appellant also argues that “[s]older powder cannot function in
particulate or paste form as solder spheres to produce solder bumps in a
BGA.” (Rebuttal Br. 3-4.) However, Appellant does not to point to any
objective evidence to support this argument. Arguments of counsel cannot
take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602
(CCPA 1965).
Therefore, we agree with the Examiner that the combination of Taylor
and King teaches or suggests the substrate product of claim 7 and the
teachings of Taylor and King have not improperly been combined.
Claims 8 and 9
Although Appellant nominally argues the rejection of dependent
claims 8 and 9 separately (App. Br. 13), the arguments presented do not
point out with particularity or explain why the limitations of the dependent
claims are separately patentable. Instead, Appellant merely reiterates the
argument that “Taylor does not disclose solder spheres at all, much less
solder spheres having a substantial uniform coating of a lubricant.” (App.
Br. 13.) Therefore, we will sustain the rejection of claims 8 and 9 for the
reasons discussed with respect to product-by-process claim 7.
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§ 103 Rejection – Wydro
We are convinced by Appellant’s arguments (App. Br. 14-15) that
Wydro does not teach or suggest “[s]older spheres having a substantially
uniform coating consisting of a lubricant,” as recited in claim 2.
The Examiner found that the metal spheres 36 of Wydro correspond
to the claimed “[s]older spheres” (Ans. 8) and that the pentaerythritol
tetraacetate liquid flux composition 26 of Wydro corresponds to the claimed
“lubricant.” (Ans. 8-9, 18.) The Examiner acknowledged that the liquid
flux composition 26 is washed from the metal spheres 36, but reasoned that
“Wydro does not say that the spheres are to be washed so as to completely
remove the flux composition.” (Ans. 17.) Thus, the Examiner found that
Wydro teaches or suggests “[s]older spheres having a substantially uniform
coating consisting of a lubricant.” (Ans. 17.) We do not agree.
Wydro teaches that the metal spheres 36 are washed after contact with
the liquid flux composition 26. (FF 8.) Wydro provides no express
disclosure that any residual liquid flux composition 26 remains on the metal
spheres 36 and, even if such a residue remained, Wydro provides no
teaching or suggestion that this residue would be a “substantially uniform
coating.” (See FF 8.) The Examiner did not provide a sound fact-based
reason as to why flux would remain after the washing procedure.
Therefore, Wydro does not teach or suggest “[s]older spheres having a
substantially uniform coating consisting of a lubricant,” as recited in claim 2.
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§ 103 Rejection – Wydro/King
Claim 7
We are not convinced by Appellant’s arguments (App. Br. 17) that the
combination of Wydro and King does not teach or suggest the substrate
product of claim 7.
The Examiner found that the metal spheres 36 of Wydro correspond
to the claimed “[s]older spheres.” (Ans. 9.) The Examiner also found the
ball grid array (BGA) of King, with solder spheres reflowed to the gold pads
of a substrate, corresponds to “[a] substrate for mounting an electronic
component.” (Ans. 9-10.) The Examiner interpreted claim 7 as a product-
by-process claim4 and articulated that “there is no evidence of record that the
instantly claimed Ball Grid Array would differ in any substantial or non-
obvious way as compared to the Ball Grid Array taught by Wydro in view of
King et al.” (Ans. 18-19.) We agree with the Examiner.
Wydro teaches forming metal spheres 36 in a receptacle 20 containing
a liquid flux composition 26, in which the metal spheres 36 are later washed
after contact with the liquid flux composition 26. (FF 7-8.) In one example,
the metal spheres 36 of Wydro can be used to solder electronics. (FF 6.)
King teaches reflowing solder spheres to the gold pads of a ball grid array
(BGA) substrate by placing the substrate in a belt oven above 183°C.
(FF 5.)
Combining the teachings of Wydro and King is no more than the
simple substitution of Wydro’s metal spheres 36 for the King’s parylene
coated or uncoated solder spheres, with no unexpected results having been

4 Appellant does not dispute this construction.
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shown by Appellant. See KSR, 550 U.S. at 417. This combination would
result in the metal spheres 36 of Wydro reflowed to the gold pads of the
BGA substrate of King. Thus, we agree with the Examiner (Ans. 18-19) that
the substrate limitation of claim 7 is met by the final ball grid array structure
produced by the combination of Wydro and King. Therefore, “the burden
shifts to applicant to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product.” In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
In arguing that “the Wydro patent does not disclose solder spheres
having a coating at all, much less solder spheres having a substantially
uniform coating consisting of a lubricant” (App. Br. 17), Appellant is
attempting to distinguish the solder spheres in the manufacturing steps of
Wydro and King from the substrate of claim 7. However, a patentability
determination of a product-by-process claim is based on the product itself.
See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Thus, Appellant has
not provided any convincing evidence to show that the substrate of claim 7
possesses an unobvious difference over the final ball grid array structure
produced by the combination of Wydro and King.
Therefore, that the combination of Wydro and King teaches or
suggests the substrate product of claim 7.
Claims 8 and 9
As discussed previously, Wydro does not teach or suggest “[s]older
spheres having a substantially uniform coating consisting of a lubricant,” as
recited in claim 2. Process claims 8 and 9 depend from independent claim 2,
and the Examiner has erred in rejecting these claims for the reasons
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discussed previously with respect to independent claim 2. King, which as
relied upon by the Examiner for its teaching of “an electronic component”
(Ans. 9-10), does not cure this deficiency of Wydro.
§ 103 Rejection – Hanawa/King
We are not convinced by Appellant’s arguments (App. Br. 18-19) that
the combination of Hanawa and King does not teach or suggest the substrate
product of claim 7 and that the Examiner improperly combined Hanawa and
King.
Again, the Examiner interpreted claim 7 as a product-by-process
claim. (Ans. 19.) The Examiner found that the solder powder having an
adipic acid protective layer of Hanawa corresponds to the claimed “solder
spheres” with a lubricant coating (Ans. 10; FF 9.) The Examiner also found
the ball grid array (BGA) of King with solder spheres reflowed to the gold
pads of a substrate corresponds to “[a] substrate for mounting an electronic
component.” (Ans. 10; FF 5.) The Examiner concluded that claim 7 would
have been obvious in view of the teachings of Hanawa and King. (Ans. 11.)
We agree with the Examiner.
Hanawa relates to a solder powder having an adipic acid protective
layer, with the adipic acid having a boiling point of 206° C. (FF 9.) The
solder powder can be used to micro-solder of electronic circuit. (FF 9.)
King teaches reflowing parylene coated or uncoated solder spheres to the
gold pads of a ball grid array (BGA) substrate by placing the substrate in a
belt oven above 183°C. (FF 5.)
Combining Hanawa and King is no more than the simple substitution
of Hanawa’s solder powder having an adipic acid protective layer for King’s
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parylene coated or uncoated solder spheres, with no unexpected results
having been shown by Appellant. See KSR, 550 U.S. at 417. This
combination would result in the solder powder of Hanawa reflowed to the
gold pads of the BGA substrate of King. We agree with the Examiner that
because “adipic acid has a boiling point of 206 °C . . . [it] sublimates at the
reflow soldering step” (Ans. 10) and thus the final ball grid array structure
produced by the combination of Hanawa and King meets the substrate
limitation of claim 7.
Therefore, as discussed previously, “the burden shifts to applicant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product.” Marosi, 710 F.2d at 803.
Appellant has not provided any convincing evidence to illustrate that the
substrate of claim 7 is different or possesses an unobvious difference over
the final ball grid array structure produced by the combination of Hanawa
and King.
Appellant argues that “the Hanawa patent is not directed to the
production of solder balls.” (App. Br. 19.) However, Hanawa describes a
prior art technique in which spherical solder particles are formed in an inert
atmosphere to reduce oxidation. (FF 9.) The claim term “solder spheres” is
sufficiently broad to encompass Hanawa’s spherical solder particles.
Appellant also argues that “the Hanawa patent relates only to
production of solder powder, not solder spheres” and attempts to distinguish
Hanawa over the claims based on the size of the Hanawa’s spherical solder
particles. (Rebuttal Br. 4.) However, such features relating to the size of the
“solder spheres” are not recited in the claims.
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Patent No. 6,387,499

19
Therefore, the combination of Hanawa and King teaches or suggests
the substrate product of claim 7 and the teachings of Hanawa and King have
not improperly been combined.
§ 102/§103 Rejection – King
We are not convinced by Appellant’s arguments (App. Br. 20) that
King does not teach or suggest the substrate product of claim 7.
As previously discussed, the Examiner interpreted claim 7 as a
product-by-process claim. (Ans. 21.) The Examiner found that the solder
spheres of King corresponds to the claimed “solder spheres.” (Ans. 11;
FF 4.) The Examiner also found the ball grid array (BGA) of King, with
solder spheres reflowed to the gold pads of the substrate, corresponds to “[a]
substrate for mounting an electronic component.” (Ans. 11; FF 5.) The
Examiner concluded that claim 7 is either anticipated by or would have been
obvious over King. (Ans. 11.) We agree with the Examiner.
King teaches reflowing parylene coated or uncoated solder spheres to
the gold pads of a ball grid array (BGA) substrate by placing the substrate in
a belt oven above 183°C. (FF 5.) King also teaches that the parylene coated
spheres have a blue color, but after reflowing, the spheres retain their bright
silver color. (FF 5.) In other words, King teaches that the parylene coating
is removed during the reflow process. (See FF 5.) We agree with the
Examiner that “King et al. teach that the protective parylene coating melts
and flows off the surface of the preform resulting in an uncoated perform
after reflow” (Ans. 21) and thus substrate of claim 7 is the same or similar to
the final ball grid array structure produced King.
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Patent No. 6,387,499

20
Therefore, as discussed previously, “the burden shifts to applicant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product.” Marosi, 710 F.2d at 803.
Appellant has not provided any convincing evidence to illustrate that the
substrate of claim 7 possesses an unobvious difference over the final ball
grid array structure produced by King.
Therefore, King teaches or suggests the substrate product of claim 7.
DECISION
The rejection of claim 2 under 35 U.S.C. § 102(b) as being anticipated
by Taylor is affirmed.
The rejection of claims 7-9 under 35 U.S.C. § 103(a) as being obvious
over Taylor and King is affirmed.
The rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious
over Wydro is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious
over Wydro and King is affirmed.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being
obvious over Wydro and King is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious
over Hanawa and King is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(e) as being anticipated
by King, or in the alternative, under 35 U.S.C. § 103(a) as being obvious
over King, is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956, 1.959, and 41.79.
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Patent No. 6,387,499

21
AFFIRMED

ack

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