Ex Parte 6515362 et al

Board of Patent Appeals and Interferences

Apr 8, 2010

90006756 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIA TECHNOLOGIES, INC.
____________

Appeal 2010-004408
Application 90/006,756
Technology Center 2800
____________

Decided: 8 April 2010
____________

Before RICHARD TORCZON, SALLY C. MEDLEY, and SCOTT R.
BOALICK, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
The appellant (Via) seeks review under 35 U.S.C. 134(b) from final
rejection of claims 1-8. The rejection of claims 1, 3-5, 7, and 8 is
REVERSED. The rejection of claims 2 and 6 is AFFIRMED. A new
ground of rejection is ENTERED AGAINST claims 1 and 5.
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OPINION
Introduction
Via's patent1 underwent reexamination at a third party's request. The
examiner rejected all pending claims under 35 U.S.C. 103 as having been
obvious. The examiner maintains a rejection2 against claims 1, 3-5, 7, and 8
in view of admissions in Via's disclosure and a patent to Lin,3 and against
claims 2 and 6 in view of the admissions, the Lin patent, and a patent to
Cooke.4 Via's claim 1 illustrates the invention (with emphasis added for the
contested limitation):5
1. A grid array package comprising:
a substrate with a top surface and a bottom surface;
an inner array of contact pads formed on the bottom
surface with two most adjacent contact pads of the inner array
of contact pads separated by a first distance;
an outer array of contact pads formed on the bottom
surface with two most adjacent contact pads of the outer array
of contact pads separated by a second distance; and
an intermediate group of contact pads formed on the
bottom surface, the contact pads positioned at corners of the
intermediate group of contact pads are ground contact pads for
grounding the grid array package;
wherein the intermediate group of contact pads is formed
between the inner array of contact pads and the outer array of

1 W.-Y. Chang, Grid array package with increased electrical grounding
routes and method of fabrication, US 6,515,362 B2 (2003).
2 Ans. at 4-8.
3 W.-F. Lin & T.H. Ho, Chip carrier having a specific power joint
distribution structure, U.S. Pat. 6,057,596 (2000).
4 L.H. Cooke & M.D. Penry, Extended architecture for FPGA, U.S. Pat.
5,440,453 (1995).
5 All claim language is taken from the claims appendix of the Substitute
Appeal Brief.
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contact pads and is separated from the inner array of contact
pads by a third distance and from the outer array of contact pads
by a fourth distance, the third distance and the fourth distance
being greater than the first distance and the second distance.
Facts and enumerated findings
Via's specification provides a "Description of the Prior Art",6
illustrated in the first three drawings. Via and the examiner disagree about
what the admitted prior art in the specification teaches. A side-by-side
comparison (below) of the prior art grid array package illustrated in FIG. 2
and of an embodiment of the claimed grid array package in FIG. 5 reveals
similarities and differences. Each figure shows (1) a square outer array of
contact pads with no designation, (2) a square inner array of contact pads
with a slash mark, and (3) a square intermediate array of contact pads. In the
prior art, the intermediate contact pads have an X mark. In FIG. 5, however,
most of the intermediate contact pads have an X mark, but the ones at the
corners and in the middle of the sides have slash marks.

6 Chang at 1:12-2:33.
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A side-by-side comparison of admitted prior art arrays and Via's arrays

Via's disclosure7 explains that in the prior art:
The center array is composed of ground solder balls 48 for
grounding. The intermediate group of contact pads comprises
power solder balls 46 for providing routes to connect the
package 10 to the power. The ground solder balls 48 of the
center array not only provide a route for grounding but also a
route for heat dissipation.
The examiner interprets the edge elements of the center array to be an
intermediate array.8 This interpretation, however, is at odds with the

7 Chang at 1:67-2:6
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description of the prior-art intermediate array in Via's specification.
Alternatively, the examiner sees in the word "comprises" the possibility that
the intermediate group has ground pads as well as power pads.9 Even if the
prior art were open to the inclusion of ground contact pads in the
intermediate array, however, it does not follow that the admitted prior art
taught or suggested ground contact pads there. Non-exclusion is not the
same as inclusion.
[1] We find that Via's admitted prior art does not teach or suggest ground
pads in the intermediate array.
The Lin patent teaches a chip carrier with contact pads. Lin discloses
a first prior-art ball-grid
array (BGA) configuration
(FIG. 2, right) with two
arrays, in which the ground
contact pads 21 are in a
central array, while the
power 22 and signal
contact 23 pads are in the
outer array. Lin describes
this configuration as
"messy" and likely to cause
interference between the
power and signal conductors.10

8 Office communication at 6 (mailed 28 October 2009).
9 Id. at 6-8.
10 Lin at 1:12-26.
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Lin describes a second prior-art BGA configuration (FIG. 3, left), in
which the power 32 and
ground 31 contact pads are
placed in triangular arrays,
which together compose the
central array. Lin notes,
however, that locating the
power contacts with the
ground contacts subjects the
power contacts to dissipating
heat from the electronic chip,
which adversely affects the
power contacts. Moreover,
the risk of a short circuit between
the power and ground contacts is increased when they are located together.11

11 Lin at 1:27-45.
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Lin provides an alternative that is applicable to either a ball-grid array
or a pin-grid array.12
Lin's solution is a three-
array structure similar to
Via's admitted prior art
with a central array of
ground contacts, an
intermediate array of
power contacts, and an
outer array of signal
contacts. The main
difference is that Lin
leaves open one corner of
the power array (FIG. 5,
right). Lin also provides guidance on spacing between the ground and
power arrays.13
The Cooke patent discloses a
packaging technique for electronic
circuits. In a particular embodiment
(FIG. 4A, right), the package 12
has an outer array of power P,
test T, clock C, and ground G
pins. The package 12 also has a

12 Lin at 2:7-13.
13 Lin at 2:50-3:3.
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non-central inner array of power P and ground G pins. The other pin
positions 16 may be signal pins. Cooke's configuration allows the package
to be rotated 90° without changing the pin assignments.14
[2] A person having ordinary skill in the art would have appreciated the
advantages of a three-array package with only the ground contacts in the
central array.
[3] A person having ordinary skill in the art would have appreciated the
advantages and disadvantages of locating power and ground contacts
together.
[4] A person having ordinary skill in the art would have appreciated the
relevance of pin-grid array configurations to ball-grid array configurations.
[5] A person having ordinary skill in the art would have been motivated to
design configurations with rotational symmetry.
Analysis
Via provides separate argument headings for independent claim 1, for
independent claim 5, and for dependent claims 2 and 6. Every other claim is
dependent and will be grouped with the independent claim on which it
depends.15
Claims 1 and 5
Although claims 1 and 5 are argued separately, the contested
limitation is the same: whether the prior art teaches or suggests ground
"contact pads positioned at corners of the intermediate" array.16 The

14 Cooke at 4:58-5:16.
15 37 C.F.R. § 41.37(c)(1)(vii) (permitting claims to be grouped).
16 In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (focus
on contested limitations).
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"positioned at corners" language is reasonably construed as meaning two or
more corners, not all corners.
The admitted prior art teaches most of the uncontested limitations.
The examiner has applied rules of claim construction to reach a broadened
understanding of what the admitted prior art teaches. Construing claims and
construing disclosures are different exercises, however. The fact that the
prior art does not exclude a possibility is not equivalent to a teaching of that
possibility; otherwise, every addition to an old combination would be per se
obvious. This is not the law.
Lin closes the gap somewhat by showing that power contact pads can
be interspersed with signal contact pads or located adjacent to a ground-
contact array. Instead of this mixing, however, Lin prefers a discrete
intermediate power array. Lin teaches leaving one corner of the power array
open. In one of Lin's prior art examples, the triangular arrays result in
ground contact pads in two corners, albeit in a joint center array.
While Lin and the admitted prior art teach the basic claimed package
structure, neither expressly teaches placing ground contact pads in two or
more corners of an intermediate array. Lin certainly suggests that a person
having ordinary skill in the art would have recognized wide latitude in the
placement of the various types of contact pads.17 The combination of Lin
and the admitted prior art do not in themselves, however, suggest the
claimed modification. Consequently, rejection of claims 1, 3-5, 7, and 8
over the admitted prior art and the Lin patent alone is not appropriate.

17 In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (explaining that skill
level may be inferred from the references).
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Although Via discusses the Cooke patent in the context of claim 5,18
and the examiner discusses Cooke as general support for this limitation,19
Cooke is only applied against claims 2 and 6. The board may not ordinarily
rely on a reference that has not been cited in the rejection.20 In some
circumstances, the reliance might be harmless.21 Indeed this case has facts
that come close. The reexamination requester relied more on Cooke than
Lin (with the admitted prior art) to explain the unpatentability of claims 1
and 5.22 Moreover, on appeal, Via argued against application of Cooke to
claim 5. Nevertheless, the examiner has insisted that Cooke is not part of
the rejection of claim 5.23 Via has not treated Cooke as applying to claim 1.
In these confused circumstances, prudence counsels against relying on
Cooke in support of the rejection for claims 1, 3-5, 7, and 8.
Claims 2 and 6
Claims 2 and 6, which depend on claims 1 and 5, respectively, add the
same24 limitation: "the intermediate group of contact pads comprises a
plurality of power contact pads for connecting the grid array package to
power." For these claims, the examiner expressly relies on Cooke in
addition to Lin and the admitted prior art.25

18 Brief at 11.
19 E.g., Ans. at 10 and 18.
20 In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
21 In re Watts, 354 F.3d 1362, 1370 (Fed. Cir. 2004).
22 R.O. Linker, Jr., Statement of Support 4-6 (entered 20 August 2003)
(relying more on Cooke than on Lin).
23 E.g., Ans. at 15.
24 Claim 6 has a typographical error: "pad" should be "pads".
25 Final Rej. at 5-6.
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Via argues that Cooke does not teach an "intermediate" array.26 While
true, this distinction is merely semantic. Cooke teaches a mixed array of
ground and power contact that is neither in the center nor on the outer edge
of the package. It is intermediate if the chip is taken as defining the center.
While Cooke does not expressly disclose a center array of ground contacts,
one skilled in the art would understand that such an array is desirable under
the chip for heat dissipation.
Via also argues that Cooke does not teach grounds in the corners of
the power array.27 Via is correct, but Cooke does teach the benefit of
rotational symmetry. With a mixed square array, there are limited solutions
to attaining rotational symmetry: grounds in the corner, grounds on the
sides, or both. Indeed, while Via does not claim it, the embodiment in Via's
FIG. 5 shows ground contact pads at the corners and the middle of the sides
in a rotationally symmetric configuration. The level of skill in the art is high
enough to embrace an appreciation of rotational symmetry in squares. A
person having ordinary skill in the art would readily appreciate that placing
ground contacts in at least two of the opposing corners of the square is one
solution to the problem.
Finally, Via argues that Cooke teaches pins, not contact pads. Again,
while this is true, those in the art appear to treat teachings for these two
types of arrays as mutually relevant.
When we view the combined teachings of the admitted prior art, the
Lin patent, and the Cooke patent together for all they would reasonably

26 Brief at 13.
27 Brief at 13-14.
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teach a person having ordinary skill in the art we must conclude that the
inventions defined in claims 2 and 6 would have been obvious.
NEW GROUND OF REJECTION
When the subject matter of a properly dependent claim would have
been obvious, the subject matter of any claims on which it depends must
also have been obvious.28 Since claims 2 and 6 are unpatentable over the
combination of Lin, Cooke, and the admitted prior art, their respective
parent claims (1 and 5) must be as well. We express no view on the other
claims.
HOLDING
The final rejection of claims 1, 3-5, 7, and 8 under § 103 is reversed.
The final rejection of claims 2 and 6 under § 103 is affirmed. A new ground
of rejection is entered against claims 1 and 5 as provided above. Via's
counsel should consult 37 C.F.R. § 41.50(b) for guidance on how to proceed
with the new ground of rejection.
AFFIRMED-IN-PART; REVERSED-IN-PART; AND NEW
GROUND OF REJECTION ENTERED UNDER 37 C.F.R. § 41.50(b)

28 Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1343 (Fed. Cir. 2009)
(invalidity); In re Muchmore, 433 F.2d 824, 824-25 (CCPA 1970) ("Since
we agree with the board's conclusion of obviousness as to these narrow
claims, the broader claims must likewise be obvious.").
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cc:

Daniel R. McClure, THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP, of
Atlanta, Georgia, for the appellant.

Raymond O. Linker, Jr., ALSTON & BIRD, LLP, of Charlotte, North Carolina,
for the reexamination requester.