Ex Parte 7268436 et al

Patent Trial and Appeal Board

May 30, 2013

95001303 (P.T.A.B. May. 30, 2013)

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.
95/001,303 01/22/2010 7268436 6702400090001 1882
57299 7590 05/31/2013
Kathy Manke
Avago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/31/2013 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 PATENT TRIAL AND APPEAL BOARD
______________

AVAGO TECHNOLOGIES WIRELESS IP (SINGAPORE) PTE., LTD,
INC.,1
Patent Owner and Appellant

v.

TRIQUINT SEMICONDUCTOR, INC.,2
Third Party Requester and Cross-Appellant
______________

Appeal 2013-003800
Reexamination Control No. 95/001,303
United States Patent 7,268,436 B23
Technology Center 3900
______________

Before JOHN C. MARTIN, STEPHEN C. SIU, and
STANLEY M. WEINBERG, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

1 See second “Appeal Brief” (hereinafter “Brief”), filed July 5, 2012, at 2,
para. 1, which replaced the first “Appeal Brief,” filed May 29, 2012.
2 See paragraph 1b of “Request for Inter Partes Reexamination Transmittal
Form,” filed on January 22, 2010, along with the “Request for Inter Partes
Reexamination of U.S. Patent No. 7,268,436” (hereinafter “Request”).
3 Issued on September 11, 2007.
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DECISION ON APPEAL
Patent Owner Avago Technologies Wireless IP (Singapore) PTE,
LTD, Inc. (hereinafter “Appellant”), appeals under 35 U.S.C. §§ 134(b) and
315(a) from the Examiner’s rejections under 35 U.S.C. § 103(a) of original
claims 1-6 and new claims 7-13 of U.S. Patent 7,268,436 B2 (“the ʼ436
patent”). TriQuint Semiconductor, Inc. (hereinafter “Requester”) did not file
a respondent brief.4
Requester on March 27, 2012, filed a notice of cross-appeal under
35 U.S.C. §§ 134(c) and 315(b) challenging the Examiner’s determination
not to adopt additional proposed rejections of claims 1, 3, and 5 under
35 U.S.C. § 103(a). “Notice of Cross-Appeal by Third-Party Requester in
Inter Partes Re-Examination” at 2-3. However, Requester did not file a
cross-appeal brief.
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We affirm all of the Examiner’s rejections and the Examiner’s
determination not to adopt the additional proposed rejections of claims 1, 3,
and 5.

4 Appellant’s “Reply [sic, Rebuttal] Brief” filed on October 29, 2012, in
response to the August 28, 2012, Examiner’s Answer, was denied entry for
being belated. “Non-Entry of Rebuttal Brief,” mailed November 15, 2012,
at 2.
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I. STATEMENT OF THE CASE
A. Related Litigation
The ʼ436 patent was the subject of litigation styled TriQuint
Semiconductor, Inc. v. Avago Technologies Limited, et al., No. 09-CV-1531
PHX JAT (D.Ariz., filed July 23, 2009). Br. 3. An Order granting the
parties’ Joint Motion to Vacate Orders of the Court and the parties’
Stipulation of Dismissal with Prejudice was rendered on May 17, 2012. Id.
See “Appendix - Related Judicial Proceedings” to the May 29, 2012,
“Appeal Brief,” last page.

B. The Invention Described in the ʼ436 Patent
The invention described in the ʼ436 patent relates to an electronic
device including a semiconductor chip having a top side with circuit
structures arranged in a cavity. ʼ436 patent 1:15-18. The circuit structures
can take the form of surface acoustic wave (SAW) filters or bulk acoustic
wave (BAW) filters. Id. at 1:22-25.
The drawings and specification of the ʼ436 patent have been amended
during this reexamination proceeding to label and describe overhang features
shown in the original patent drawings.5 Specifically, Figures 1 and 2 have
been amended to include width dimensions W1 and W2 and overhang values

5 Amended (i.e., replacement) Figures 1-3 were filed November 28, 2011,
and approved at page 1 of the Right of Appeal Notice (RAN). The
“Amendments to the Specification” (hereinafter “Amendments”) appear at
(Continued on next page.)
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101 and 201, and Figure 3 has been amended to include overhang values 301
and 302. These overhang features are recited in new claims 7-13,
reproduced infra.
Figure 1 (as amended) is reproduced below.

Figure 1 shows a diagrammatic cross section through an electronic device 1
of a first embodiment. Id. at 4:20-21. As shown in this figure, a plastic
housing composition 18 surrounds the entire electronic device with the

pages 3 and 4 of the May 28, 2010, “Response by Patent Owner in Inter
Partes Reexamination Request” and were approved in the February 4, 2011,
nonfinal second Office Action (by marking an attached copy of the first page
of the Amendments “Okay to enter; EK 1/26/2010 [sic, 2011]”).
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exception of the bottom surface of metallic external contacts 14 on the
underside 21 of the electronic device. Id. at 4:22-24.
A first semiconductor chip 4 is provided with a circuit structure 5,
such as a BAW filter, above which is arranged a cavity 2. Id. at 4:25-28. A
plastic layer 6 functions as a “cavity frame” 8 that surrounds the circuit
structure 5 and delineates the sides of the cavity. Id. at 4:31-35. The top of
cavity 2 is closed off by a further semiconductor chip 15, which can be fixed
on cavity frame 8 by an adhesive film 17. Id. at 4:33-35. Contact areas 12
on the top side 7 of semiconductor chip 4 are connected by
thermocompression heads 24 and bonding wires 22 to a bondable coating 25
on the inner areas 13 of external contacts 14. Id. at 4:44-49. The connection
23 between each bonding wire 22 and bondable coating 25 of an external
contact 14 is referred to (in discussing the Figure 2 embodiment) as a
“thermocompression arc” or “bonding arc.” Id. at 5:16-18. The adhesive
film 17 seals the cavities 2 with respect to the plastics housing composition
18 and can compensate for unevennesses of the cavity frames 8. Id. at 5:32-
35.
The description of the Figure 1 embodiment in the ʼ436 patent
specification has been amended to include the following paragraph:
The cavity frame 8 has a first width (shown as wl in
Fig. 1) and the cavity cover 20 has a second width (shown as w2
in Fig. 1). The second width (w2) is greater than the first width
(w1). As such, the cavity cover 20 “overhangs” the cavity
frame 8 by an overhang 101 on either side of the cavity frame 8.
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Amendments 3, para. 2 (underlining omitted).6
Figure 2 (as amended) is reproduced below.

Figure 2 shows a diagrammatic cross section through an electronic device 10
of a second embodiment. Id. at 5:6-8. The Figure 2 embodiment has been
made flatter (i.e., thinner) than the Figure 1 embodiment by replacing
thermocompression heads 24 (Fig. 1), which connect wires 22 to contact
areas 12 on semiconductor chip 4, with thermocompression or bonding
arcs 23. Id. at 5:10-20. The description of the Figure 2 embodiment has
been amended in the same manner as the description of the Figure 1
embodiment. Amendments 3, para. 3.

6 In quotations herein from the ʼ436 patent and the references, bolding of
the reference numerals has been omitted.
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Figure 3 (as amended) is reproduced below.

Figure 3 shows a diagrammatic cross section through an electronic device
100 of a third embodiment. Id. at 5:21-23. This embodiment has three
cavities 2 covered by a common cavity cover 20 made of a single
semiconductor chip 15. Id. at 5:25-31. The description of the Figure 3
embodiment has been amended by inserting the following paragraph after
the paragraph that ends at column 5, line 37:
As shown in Fig. 3 the common cavity cover 20
overhangs an outermost cavity frame 8’ by an overhang 301.
The overhang 301 between the common cavity cover 20 and
outermost cavity frame 8’ is on both ends of the common cavity
frame 20. The common cavity frame 20 also overhangs cavity
frames 8 (i.e., interior cavity frames) by overhangs 302 as
shown in Fig. 3.
Amendments 4, para. 4 (underlining omitted).
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The Examiner has not issued a new matter objection regarding the
amendments to the drawings or specification or a new matter rejection of
new claims 7-13.

B. The Claims on Appeal
The independent claims are original claims 1 and 6 and new claims 7
and 12. Claims 1 and 6 read as follows:
1. An electronic device, comprising:
a semiconductor chip including a top side with a plurality
of circuit structures that form a bottom region of a cavity,
wherein the circuit structures on the semiconductor chip
comprise bulk acoustic wave filters and/or surface acoustic
wave filters;
a cavity frame disposed on the top side of the
semiconductor chip;
contact areas disposed on the top side of the
semiconductor chip external to the cavity frame, the contact
areas being connected via bonding connections to inner areas of
external contacts, wherein the bonding connections of the
contact areas and the inner areas of external contacts each
include a bonding arc; and
a cavity cover comprising a semiconductor material and
being arranged on the cavity frame such that the cavity frame
and cavity cover seal the cavity from penetration of a plastic
housing composition during molding of the electronic device.

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6. An electronic device, comprising:
a semiconductor chip module comprising a plurality of
semiconductor chips embedded in a plastic housing
composition, wherein the semiconductor chips include
respective top sides with a plurality of circuit structures that
form bottom regions of a respective plurality of cavities;
cavity frames respectively disposed on the top sides of
the semiconductor chips; and
a common cavity cover comprising a semiconductor
material and being arranged on the cavity frames such that the
cavity frames and the common cavity cover seal the respective
plurality of cavities from penetration of the plastic housing
composition during molding of the electronic device.
ʼ436 patent, col. 6.
New claims 7 and 12 are reproduced below with underlining used to
identify only the differences between these claims and original claims 1
and 6:
7. An electronic device, comprising:
a semiconductor chip including a top side with a plurality
of circuit structures that form a bottom region of a cavity,
wherein the circuit structures on the semiconductor chip
comprise bulk acoustic wave filters and/or surface acoustic
wave filters;
a cavity frame having a first width, the cavity frame
being disposed on the top side of the semiconductor chip;
contact areas disposed on the top side of the
semiconductor chip external to the cavity frame, the contact
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areas being connected via bonding connections to inner areas of
external contacts, wherein the bonding connections of the
contact areas and the inner areas of external contacts each
include a bonding arc; and
a cavity cover having a second width that is greater than
the first width, the cavity cover comprising a semiconductor
material and being arranged on and overhanging the cavity
frame such that the cavity frame and cavity cover seal the cavity
from penetration of a plastic housing composition during
molding of the electronic device.
12. An electronic device, comprising:
a semiconductor chip module comprising a plurality of
semiconductor chips embedded in a plastic housing
composition, wherein the semiconductor chips include
respective top sides with a plurality of circuit structures that
form bottom regions of a respective plurality of cavities;
cavity frames respectively disposed on the top sides of
the semiconductor chips; and
a common cavity cover comprising a semiconductor
material, the common cavity cover having an end and being
arranged on the cavity frames such that the end overhangs one
or more of the cavity frames, wherein the cavity frames and the
common cavity cover seal the respective plurality of cavities
from penetration of the plastic housing composition during
molding of the electronic device.
Claims App., Br. 34-35 (underlining altered).

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C. The Rejections Appealed By Appellant
Appellant appeals the following grounds of rejection entered by the
Examiner:
1. Claims 1, 5, and 6 under 35 U.S.C. § 103(a) for obviousness over
Johnson,7 Mitsutsuka,8 and Manning.9 RAN 5-13.
2. Claims 1, 5, and 6 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Barber,10 and Manning. Id. at 14-15.
3. Claims 2-4 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, Manning, and Onishi.11 Id. at 15-18.
4. Claims 7 and 11-13 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, Manning, and any one of Borchelt,12 Cohn ʼ067,13 and
Cohn ‘902.14 Id. at 18-24.
5. Claims 8-10 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, Manning, and any one of Borchelt, Cohn ʼ067, and
Cohn ʼ902, and further in view of Onishi. Id. at 24.

7 Johnson et al., U.S. Patent 5,729,185, issued March 17, 1998.
8 Mitsutsuka, U.S. Patent 4,748,364, issued May 31, 1988.
9 Manning et al., U.S. Patent 6,169,331 B1, issued January 2, 2001.
10 Barber et al., U.S. Patent 6,339,276 B1, issued January 15, 2002.
11 Onishi, et al., U.S. patent 5,920,142, issued July 6, 1999.
12 Borchelt, et al., U.S. Patent 5,337,026, issued August 9, 1994.
13 Cohn, et al., U.S. Patent 6,853,067 B1, issued February 8, 2005.
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D. The Nonadopted Proposed Rejections Identified in Requester’s Notice of
Cross-Appeal
In the Notice of Cross-Appeal (filed March 27, 2012), Requester
appeals from the Examiner’s determination not to adopt the following
rejections that were proposed in the Request:
1. Claims 1, 3, and 5 under 35 U.S.C. § 103(a) for obviousness over
Johnson;
2. Claim 3 under 35 U.S.C. § 103(a) for obviousness over Johnson in
view of Mitsutsuka and Manning; and
3. Claim 3 under 35 U.S.C. § 103(a) for obviousness over Johnson in
view of Barber and Manning.
Because Requester failed to file an appeal brief, we summarily sustain
the Examiner’s determination not to enter these rejections.

II. DISCUSSION
A. The Rejections of Original Claims 1-6
1. The Rejection of Claims 1, 5, and 6 based on Johnson, Mitsutsuka,
and Manning
Johnson’s invention relates to SAW frequency selection component
packages and more particularly to a simplified technique for lid attachment
in such packages. Johnson 1:7-11.
Figure 1 of Johnson is reproduced below.

14 Cohn, et al., U.S. Patent 6,872,902 B2, issued March 29, 2005.
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Figure 1 is a simplified plan view of a wafer 100 including “acoustic wave
filter dice 102.” Id. at 2:15-16. “Typically, wafer 100 is diced by a high
speed saw along scribe lines 103, 103' to separate individual die 102 for
packaging.” Id. at 2:16-18. This dicing step occurs following attachment to
wafer 100 of a second wafer that provides the lids for the cavities. Id. at
3:27-35; 3:66-4:5.
Figures 2 and 3 of Johnson are reproduced below.
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Figure 2 is a simplified plan view of an individual die 102 (id. at 2:4-5, 26-
27), also referred to as “SAW die 102.” Id. at 3:60. The embodiment of die
102 shown in this figure has surface acoustic wave transducers 18 and 18',
bond pads 20, and interdigitated electrodes 21. Id. at 2:27-32.
Figure 3 is described as “a side view, in section, taken along section
lines III--III of FIG. 2,” showing die 102 with an attached lid 40 that is
formed with the second wafer. Id. at 2:6-8; 3:17, 34-35. Figure 3 shows a
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cavity 41 (id. at 4:10) that is formed in the same manner as the cavity in the
ʼ436 patent. That is, the bottom of cavity 41 corresponds to the top surface
of the “[s]ubstrate or wafer 100” (id. at 2:18); the sides of the cavity are
defined by a seal ring 25 located on the top surface of substrate 100 (id. at
2:46-49); and the top of the cavity corresponds to the bottom surface of lid
40, which is mounted on the top surface of seal ring 25. Id. at 3:16-17. In
the embodiment depicted in Figure 3, the lid portion of the second wafer
includes a recesses (dashed line 41) that prevents the lid from contacting the
active area of SAW die 102. Id. at 3:57-60. Alternatively, seal ring 25 can
be made tall enough to provide adequate clearance over the active area. Id.
at 3:61-63. Seal ring 25 cooperates with an adhesive layer (not illustrated)
disposed between seal ring 25 and lid 40 in order to “secure lid 40 to die 102
and prevent intrusion of foreign materials during overmolding and at any
other time.” Id. at 3:9-19.
The only differences between claim 1 and Johnson argued by
Appellant are: (i) Johnson’s failure to describe wafer or substrate 100 as
comprising a semiconductor chip; and (ii) Johnson’s failure to describe lid
40 as comprising a semiconductor material.15 We begin our analysis by
addressing the obviousness of implementing substrate 100 as a
semiconductor chip. Regarding substrate 100, Johnson explains:

15 Appellant does not challenge the Examiner’s reliance on Manning for a
teaching of the recited “bonding arc” with respect to any of the grounds of
rejection. Ans. 8-9.
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Substrate or wafer 100 typically comprises crystalline quartz,
lithium niobate (LiNbO3), lithium tantalate (LiTaO3), lithium
tetraborate (Li2B4O7) or zinc oxide films deposited on suitable
substrata and includes a polished surface upon which device
patterns are formed by photolithographic techniques similar to
those employed in the manufacture of integrated circuits or
other microelectronic components.
Id. at 2:18-25. Appellant concedes that these films deposited on the
“substrata” are piezoelectric films. See Br. 17-18: “[O]ne of ordinary skill in
the art would recognize that the materials provided on a ‘suitable substrata’
(i.e., crystalline quartz, LiNbO3, LiTaO3, Li.2B4O7 [sic, Li2B4O7] or ZnO
films) are provided for their piezoelectric properties.” The Examiner agrees
with this description, referring to “the piezoelectric films, e.g. quartz, lithium
niobate, zinc oxide, et[ ]cetera (Johnson, col. 2, line[s] 18-25).” Answer 27
(emphasis added).
Furthermore, Appellant does not dispute Requester’s assertion that
zinc oxide is a semiconductor material, instead arguing that Johnson’s zinc
oxide film is not the semiconductor chip required by claim 1.16 The
Examiner agrees that Johnson’s films do not correspond to the recited

16 Specifically, after acknowledging (Br. 17) Requester’s assertion that “at
least zinc oxide is a semiconductor,” Appellant states:
[O]ne of ordinary skill in the art would recognize that the
materials provided on a ‘suitable substrata’ (i.e., crystalline
quartz, LiNbO3, LiTaO3, Li.2B4O7 [sic, Li2B4O7] or ZnO films)
[in Johnson] are provided for their piezoelectric properties, and
(Continued on next page.)
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semiconductor chip. See Answer 27 (“1. It was never contended that
Johnson teaches the claimed semiconductor chip.”) (emphasis omitted).
In describing lid 40, Johnson explains that the lid and the substrate
100 can be made of the same material (id. at 3:27-3717) and also that “lid
40/second wafer may comprise metals (e.g., Cu), ceramic or glass materials
having suitably chosen thermal expansion characteristics.” Id. at 3:42-45.
For a suggestion of implementing Johnson’s “substrata” (i.e.,
substratum) as a semiconductor chip, the Examiner relies on Mitsutsuka.
Mitsutsuka’s invention relates to SAW devices that include a semiconductor
substrate having a piezoelectric film disposed thereon. Mitsutsuka 1:8-16.
Mitsutsuka’s Figure 7, which is described in Mitsutsuka’s
“Background of the Invention,” is reproduced below.

[are] not a semiconductor chip on which bulk acoustic wave
filters and/or surface acoustic wave filters are provided.
Br. 17-18 (bolding omitted).
17 Johnson describes, for example, “placing a second wafer (not illustrated),
preferably but not necessarily of the same material as substrate 102 [sic,
100] and desirably having similar crystallographic orientation, atop wafer
100.” Johnson 3:29-35. See also id. at 3:46-47 (describing “[a]dvantages of
using the same material for both the first 100 and second [i.e., lid] wafers”).
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Figure 7 is a perspective view of a “fixed band prior art SAW filter.” Id. at
3:4-5. Reference numeral 1 is a piezoelectric substrate; 2ʼ indicates comb-
shaped electrodes constituting an input transducer 2; and 3ʼ indicates comb-
shaped electrodes constituting an output transducer 3. Id. at 1:25-28.
Mitsutsuka’s Figure 8A is reproduced below.

Figure 8A is a top view of a “variable band prior art SAW filter.” Id. at
3:6-7. A plurality of SAW filters are mounted on a substrate so that the
bands of the filters are adjacent to each other, with the desired band being
selected by switching an external circuit 4. Id. at 1:41-45.
Mitsutsuka’s Figure 8B is reproduced below.
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Figure 8B is a diagram illustrating the relation between the output and
frequency for the filter of Figure 8A. Id. at 3:8-9.
An object of Mitsutsuka’s invention is “to provide a variable band
SAW filter requiring no switching circuit such as that indicated in FIG. 8
and having a large freedom.” Id. at 2:20-23.
Mitsutsuka’s Figure 1 is reproduced below.

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Figure 1 is a perspective view of a variable band SAW filter according to an
embodiment of Mitsutsuka’s invention. Id. at 3:38-40. A semiconductor
substrate 7 and a piezoelectric film 8 disposed thereon constitute a
piezoelectric substrate 1. Id. at 3:42-43.18 Between the input comb-shaped
electrodes 2ʼ and the output comb-shaped electrodes 3A, 3B, 3C, 3D are
disposed metal electrodes 10A, 10B, 10C, 10D. Id. at 3:55-58. When the
bias voltages VA, VB, VC, VD applied to the metal electrodes 10A, 10B, 10C,
10D are varied, the propagation loss due to the effect of each of the filters
varies, and therefore the whole pass band can be set differently by adjusting
the bias voltages. Id. at 4:1-6.
Mitsutsuka’s Figure 2 is reproduced below.

18 Mitsutsuka does not give specific examples of materials suitable for use as
semiconductor substrate 7 or piezoelectric film 8.

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Figure 2 shows variations of the propagation loss due to the effect of the
filters in the bands A, B, C, D for different bias voltages. Id. at 4:7-9. The
bias voltages can be set selectively so that a desired output can be obtained,
e.g., as indicated by the solid line. Id. at 4:9-11.
Mitsutsuka describes the advantages of the invention as follows:
[S]ince it is possible to control the propagation of SAW only by
commuting the bias voltages, the device according to this
invention has an advantage that the circuit therefor can be
simplified with respect to that of the prior art device, by which
switching of SAW is effected by switching of RF signals.
Further, since the semiconductor substrate is cheaper and large
size substrates are available more easily with respect to the
piezoelectric body, the substrate according to this invention has
as an advantage that it can be fabricated with a lower cost than
the substrate used by the prior art techniques.
Id. at 5:43-54 (emphasis added). Thus, as explained by the Examiner,
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“Mitsutsuka teaches that semiconductor materials are more cost effective
than using piezoelectric substrates (Mitsutsuka, section entitled ‘Background
of the Invention’, cols. 1-2), thereby encouraging the use of semiconductor
materials for use as substrates for SAW devices.” Answer 32.
We agree with the Examiner’s conclusion that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the ʼ436 invention to substitute Mitsutsuka’s
semiconductor substrate for Johnson’s substrate of an
unspecified material, particularly in light of Johnson’s
disclosure [at 2:18-24] . . . that integrated circuit fabrication
techniques and materials are used to manufacture acoustic
fil[t]er devices.
RAN 8 and Answer 6 (both quoting Request 27). This rejection is clearly
based on Johnson’s description of depositing the (piezoelectric) “films” on
“suitable substrata” in combination with Mitsutsuka’s teaching that
semiconductor substrates are suitable substrates for supporting piezoelectric
layers in SAW devices. This rejection is therefore consistent with the
principle that “[w]hen 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 has good reason to pursue the known options within
his or her technical grasp.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007). See also In re Leshin, 277 F.2d 197, 199 (CCPA 1960) (“Mere
selection of known plastics to make a container-dispenser of a type made of
plastics prior to the invention, the selection of the plastics being on the basis
of suitability for the intended use, would be entirely obvious; and in view of
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35 U.S.C. 103 it is a wonder that the point is even mentioned.”). As pointed
out in the above-quoted statement of the rejection, the selection of
Mitsutsuka’s semiconductor substrate material to serve as Johnson’s
“subtrat[um]” is consistent with Johnson’s requirement that the wafer or
substrate 100 “include[] a polished surface upon which device patterns are
formed by photolithographic techniques similar to those employed in the
manufacture of integrated circuits or other microelectronic components.”
Johnson 2:18-25. Furthermore, as noted by the Examiner, selecting
Mitsutsuka’s semiconductor substrate material to serve as Johnson’s
substrata is consistent with Mitsutsuka’s teaching of “[the] cost-benefitting
use of Mitsutsuka’s semiconductor chips having a piezoelectric layer formed
thereon for making a SAW device.” Answer 27.
For the above reasons, Appellant is incorrect to describe the rejection
as based on a finding that Johnson describes using a semiconductor material
as the substratum. See Br. 13 (“[N]ot only does Johnson, et al. fail to
disclose a semiconductor chip and a cavity cover comprising a
semiconductor material, but also the basis for the assertion of the Office
Action and the Request that semiconductor substrata are disclosed in
Johnson, et. al. (i.e., the alleged disclosure of semiconductor processing
techniques in Johnson, et al.) is not well grounded.”). For the same reasons,
Appellant is incorrect to characterize the rejection as involving “the
impermissible use of claim 1 as a template for its own reconstruction.” Br.
11.
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Appellant’s principal argument against the rejection of claim 1 is that
Johnson “teaches away from the use of semiconductor materials.” Br. 13.
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be led in a direction divergent from the
path that was taken by the patent owner, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). According to Appellant:
At best, following the teachings of Johnson, et al., the patent
owner respectfully submits that one of ordinary skill in the art
would have been driven to fabricate the lid 40 from a metal, or
a ceramic material or a glass material, and to fabricate the die
102 preferably from the same material (i.e., a metal, or a
ceramic material or a glass material).
Br. 15. This argument is unpersuasive because these specifically identified
materials (namely, a metal, a ceramic material, or a glass material) would
have been understood to be nonlimiting examples of suitable materials, as
evidenced by the phrase “may comprise” in Johnson’s statement that the “lid
40/second wafer may comprise metals (e.g., Cu), ceramic or glass materials
having suitably chosen thermal expansion characteristics.” Johnson 3:42-45.
See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.”). Appellant has not identified any characteristic of Johnson’s
wafer 100, substratum, lid 40, or assembled SAW device that would have
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been understood as discouraging the selection of semiconductor substrates as
the “suitable substrata” for wafers 100. For the same reason, we are also
unpersuaded by the following additional argument:
[I]f Johnson, et al. would have contemplated the use of
semiconductor materials for the die 102 and the lid 40,
[Johnson, et al.,] in listing the materials that could be used for
the lid 40, . . . would have taken the opportunity to list
semiconductor materials when listing metals (e.g., Cu), ceramic
or glass materials. From this omission, the patent owner
respectfully submits that Johnson, et al., did not contemplate
the use of semiconductor materials for the chip 102 and the lid
40.
Br. 16.
The rejection for obviousness over Johnson in view of Mitsutsuka and
Manning is therefore sustained with respect to claim 1 and also with respect
to dependent claim 5, which is not separately argued. Br. 19.
As for independent claim 6, the Brief in discussing this ground of
rejection incorrectly describes claim 6 as depending on claim 1 and thus
treats claim 6 as standing or falling with claim 1. See Br. 19 (“[C]laims 2-6,
which ultimately depend from claim 1, are patentable for at least the same
reasons and in view of their additionally recited subject matter.”). However,
the Brief in arguing against the rejection of claims 7 and 11-13 for
obviousness over Johnson, Mitsutsuka, Manning, and any one of Borchelt,
Cohn ʼ067, and Cohn ʼ902 makes separate arguments for independent claims
7 and 12, specifically arguing claim 12 limitations that also appear in claim 6
(i.e., a cavity cover located on a cavity frame and a plurality of cavities).
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These claim 12 arguments are therefore being treated below as though also
made in response to the rejection of claim 6 over Johnson in view of
Mitsutsuka and Manning.
Claim 6 differs from claim 1 by additionally reciting that the recited
“electronic device” comprises: (i) a semiconductor chip module including a
plurality of semiconductor chips; (ii) respective cavity frames on the
semiconductor chips; and (iii) a common cavity cover comprising
semiconductor material. For a teaching of modifying Johnson to include a
cover common to a plurality of cavity frames, the Examiner relies on
Johnson’s dicing technique (described with reference to Figures 1-3) in
combination with Johnson’s Figure 4. As noted above, lines 103 and 103’ in
Figure 1 represent scribe lines for dividing the sandwiched wafer 100 and
second (i.e., lid) wafer into individual devices like the device depicted in
side view in Figure 3, each device having a single cavity. Johnson 3:66-4:5.
As shown in Figure 3, lid 40 and die 102 have different widths because the
second wafer is diced using a blade having a wider kerf than does the blade
used to dice wafer 100. Id.19

19 We therefore agree with the Examiner that “[i]t is . . . not clear what basis
the Owner has for stating [Br. 30 n.15] that Johnson ‘thus does not reveal the
results of the dicing sequence.’” Answer 44 (quoting page 28 of “Third
Party Requester’s Comments After Patent Owner’s Response to Second
Office Action in Inter Partes Re-Examination of U.S. Patent No,
7,268,436,” filed May 3, 2011 (hereinafter “Requester’s May 2011
Comments”).
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Figure 4 of Johnson is reproduced below.

Figure 4 is a block diagram of portion 1200 of a radio or other
communications apparatus including one or more acoustic wave filters in
accordance with Johnson’s invention. Johnson 4:18-21. Diplexer 1209,
filter 1215, filter 1239, filter 1255 and/or filter 1277 can comprise acoustic
wave filters according to Johnson’s invention. Id. at 4:40-42. The Examiner
concluded that “it would have been obvious to one of ordinary skill in the
art, at the time of the invention to include plural chips 102 to form a module
to reduce the number of cuts of the cover 40/wafer 100 ‘sandwich’ required
for making a ‘radio or communications apparatus.’” RAN 13.
Appellant makes two arguments regarding the rejection of claim 12
that presumably are also considered to be applicable to the rejection of
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claim 6. The first argument is that “none of Borchelt, et al., Cohn, et al.
(ʼ067) and Cohn, et al. ([ʼ]902) disclose a cavity frame, and therefore cannot
disclose a cavity cover arranged on . . . the cavity frame.” Br. 29. This
argument is unpersuasive because the Examiner relies on Johnson rather
than on these other references for the recited cavity frames. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
Appellant’s second argument is that “Figs. 2 and 3 of Johnson, et al. .
. . do[] not show a plurality of cavities.” Br. 30. This assertion, while
correct, is unpersuasive because it fails to address the Examiner’s proposed
modification of Johnson’s dicing operation to yield a device having a
plurality of cavities (and cavity frames) covered by a common lid. Keller,
642 F.2d at 426.
The rejection of claim 6 for obviousness over Johnson in view of
Mitsutsuka and Manning is therefore sustained.
In summary, the rejection of each of claims 1, 5, and 6 on this ground
is sustained.

2. The Rejection of Claims 2-4 Based on Johnson, Mitsutsuka,
Manning, and Onishi
The rejection of dependent claims 2-4 for obviousness over Johnson
in view of Mitsutsuka, Manning, and Onishi is sustained because Appellant
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(Br. 23) treats this rejection as standing or falling with the rejection of
claim 1 discussed above, which we have sustained.

3. The Rejection of Claims 1, 5, and 6 Based on Johnson, Barber, and
Manning
This ground of rejection relies on Barber rather than Mitsutsuka for a
teaching of using a semiconductor chip as a substrate in an acoustic wave
device. RAN 14-15.
Barber’s invention relates to electrical resonators that employ a
mechanical transducer and more particularly to a method for fine tuning such
resonators following batch fabrication. Barber 1:7-9.
The rejection is based on the device depicted in Barber’s Figure 1,
reproduced below.

Figure 1 is a cross-sectional view of a typical (i.e., prior art) resonator 10 on
a support 12 having an upper planar surface 14. Id. at 4:19, 50-53. Barber
explains:
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Substrate 12 can be any convenient material that is easily
workable, e.g. any of the well known semiconductor materials.
In the present specific example, substrate 12 is a silicon wafer
normally used for fabricating semiconductor products. Other
materials useful as resonator supports include, inter alia, glass,
quartz, sapphire or high resistivity silicon[.]
Id. at 4:53-59. The mechanical resonator 10 formed on substrate 12 includes
a multi-layer acoustic reflective mirror 16, upon which are disposed layers
18, 20, and 22. Specifically, acoustic reflective mirror 16 consists of a
plurality of alternating layers of SiO2 and AlN (aluminum nitride20) with
each mirror layer having a typical thickness that is 1/4 of the wavelength of
the filter’s central frequency. Id. at 4:60-64. A conductive layer forming a
bottom electrode 18 is deposited and patterned (if required) on the surface of
the acoustic mirror. Id. at 5:14-16. A mechanical transducer layer 20, such
as a piezoelectric layer, is next coated over the bottom electrode, and a
conductive layer 22 is coated over the transducer layer and patterned to form
the resonator 10. Id. at 5:16-19.
The Examiner, relying on Johnson’s above-noted suggestion of using
the same material for the substrate and the lid, concluded that
[i]t would have been obvious to one of ordinary skill in the art,
at the time of the invention, to use a semiconductor material as
both the “suitable substrata” for wafer 100 and for the lid 40
(second wafer) in Johnson, as a material of obvious material
choice evidenced by Barber.

20 Barber 1:30.
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RAN 14-15. Appellant responds with two arguments. The first argument is:
While Barber does disclose a substrate 12 with a mechanical
resonator, and that the substrate can be any of the well known
semiconductor materials, the patent owner respectfully submits
that the absence of the teaching or suggestion of any material
for the substrata of Johnson, et al. cannot reasonably present an
opportunity to substitute a substrate 12 of Barber for the
substrata.
Br. 21. This argument is unpersuasive for the reasons given above in the
discussion of the rejection based on Johnson in view of Mitsutsuka and
Manning, which is that nothing in Johnson would have been understood to
be teaching away from forming the substratum of Johnson’s wafer 100 with
a semiconductor material, which is described by Barber as suitable for use as
a substrate in acoustic wave devices.
Appellant’s second argument is that “Barber fails to disclose a lid on
the piezoelectric substrate” or “a type of material used for the lid.” Br. 21.
This argument is unpersuasive because the Examiner relies on Johnson for a
teaching of a lid (i.e., the claimed “cavity cover”) as well as for a teaching of
forming the lid of the same material as the substratum of wafer 100. See
Keller, 642 F.2d at 426 (one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references).
The rejection of claim 1 for obviousness over Johnson in view of
Barber and Manning is therefore sustained, as is the rejection on the same
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ground of dependent claim 5, which Appellant describes as standing or
falling with claim 1. Br. 23.
We assume Appellant also inadvertently failed to make the above-
noted claim 12 argument with respect to the rejection of claim 6 for
obviousness over Johnson in view of Barber and Manning, and we find this
argument unpersuasive for the reasons given above in the discussion of the
rejection of claim 6 for obviousness over Johnson in view of Mitsutsuka and
Manning. That is, Appellant failed to address the Examiner’s proposed
modification of Johnson’s dicing operation to yield a device having a
plurality of cavities (and cavity frames) covered by a common lid.

B. The Rejections of New Claims 7-13
1. The Scope and Meaning of New Claims 7-13
Claim 7 recites the overhang feature as follows:
a cavity cover having a second width that is greater than
the first width, the cavity cover comprising a semiconductor
material and being arranged on and overhanging the cavity
frame such that the cavity frame and cavity cover seal the cavity
from penetration of a plastic housing composition during
molding of the electronic device.
Claims App., Br. 34 (underlining modified). The ʼ436 patent (as filed or as
amended) does not explain the reason for the overhang depicted in drawings.
Appellant credits the overhang with providing the following advantage:
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In order to work within the limits of accuracy of the tooling and
equipment used in the placement of the cavity cover 20, the
cavity cover 20 has a width (w2) that is greater than the width
(w1) of the cavity and its frame to ensure overlap about the
perimeter of the cavity frame 8.
Br. 26 (emphasis added). This argument presumably refers to the
description in the ʼ436 patent (at 3:3-22) of applying an individual cavity
cover to a cavity frame located on a semiconductor chip formed by dicing a
semiconductor wafer. According to Appellant, “the [ʼ]436 patent uses the
overhang to improve the yield, by having fewer components damaged by
plastic ingress.” Br. 27.
We agree with the Examiner and Requester that “claim 7 does not
state that the overhang of the cavity cover ‘serves to ensure that the cavity
frame 8 and the cavity cover 20 seal the cavity 2 from penetration of a
plastic housing composition.’” Answer 40 (our emphasis) (quoting page 22
of Requester’s May 2011 Comments). The claim 7 language “such that the
cavity frame and cavity cover seal the cavity from penetration of a plastic
housing composition during molding of the electronic device” describes the
sealing effect provided by a continuous line of contact between the cavity
cover and the cavity frame and thus is satisfied even if there is no overhang.
This conclusion should be evident from the fact that this claim language
also appears in claims 1 and 6, which do not recite any overhang.
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We therefore agree with the Examiner that neither of independent
claims 7 and 12 attributes the claimed sealing function to the recited
overhang.

2. The Rejection of Claims 7 and 11-13 Based on Johnson,
Mitsutsuka, Manning, and any one of Borchelt, Cohn ʼ067, and Cohn
ʼ902
For a teaching of making Johnson’s lid wider than seal ring 25,
thereby resulting in the claimed overhang, the Examiner relies on any one of
Borchelt, Cohn ʼ067, and Cohn ʼ902. RAN 18.
Borchelt’s invention relates generally to SAW devices and more
particularly to SAW device packages. Borchelt 1:12-14.
Borchelt’s Figure 3A is reproduced below.

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Figure 3A is an exploded isometric view of a SAW device package 20' for a
SAW device, specifically a resonator 21a. Id. at 2:46-51; 7:20-21.
Figure 3B is reproduced below.

Figure 3B is a cross-sectional view taken along lines 3B-3B of Figure 3A.
Id. at 3:52-53. Base substrate 22 and substrate cover 26 are both formed of
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ST-cut quartz. Id. at 5:49-50; 7:33. Substrate cover 26 has glazed glass frit
24 formed thereon to serve as a seal around a space between the substrate
and cover. Id. at 8:3-9. This space is labeled 25 in Figure 5A, reproduced
below.

Figure 5A is a cross-sectional view of the sealed quartz package for the
SAW device of Figure 3A. Id. at 3:61-64.
As is apparent from Figures 3A and 3B, cover 26 is wider than glass
frit seal 24.
Cohn ʼ067 describes improvements in the packaging of
“microelectromechanical devices” or “MEMS,” which are generally
fabricated on silicon wafers but are different from most integrated circuits
(ICs) in that they possess moving elements. Cohn ʼ067 at 1:20-33. This
reference explains in the “Background of the Invention”:
A wafer-scale pre-packaging method of bonding two
wafers together has been used to bond a wafer of silicon or
glass onto a MEMS wafer. In accordance with this process, a
non-conductive glass frit is screen-printed onto the lid wafer, in
the shape of rings or gaskets. The wafers are then placed
together to form cavities containing MEMS devices and bonded
by the application of heat in excess of 400 degrees Celsius.
After bonding, the two-wafer stack is diced and the resulting
hybrid structures are packaged in the standard manner: by
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encapsulation in plastic packages such as DIPs, SOICs, etc.
While this process has been marginally successful, it suffers
from the deficiency that the glass frit cannot be patterned into
fine features.
Id. at 1:66-2:9.
Figures 3a and 3b of Cohn ʼ067 are reproduced below.

Figures 3a and 3b, together with Figures 3c and 3d, show a wafer-scale
process for thermocompressively bonding one wafer to another in
accordance with the Cohn ʼ067 invention. Id. at 10:9-11. Figure 3a shows a
substrate 300 having plural instances of a MEMS die 310. Id. at 10:11-15.
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The particular instance of the MEMS die that is labeled 310' shows a sealing
ring 312 of bonding material surrounding the following: MEMS 313, plural
bump-like features 314 of bonding material that form electrical contacts, and
conductive lines 315. Id. at 10:20-27. Figure 3b shows an IC
semiconductor circuit wafer 350 to be bonded to MEMS wafer 300. Id. at
11:53-55. Substrate 350 comprises a semiconductor wafer having plural
instances 360 of a particular IC 360' and a pattern of bonding features (id. at
11:55-58), including a sealing ring 312'. Id. at 12:32.
Figure 3c of Cohn ʼ067 is reproduced below.

As shown in Figure 3c, the IC and MEMS wafers are “preferably placed in
aligned confronting relation, electrically coupled to one another via the
thermocompression bonds formed by contacts 312/312' [sic, 314/314'] and
sea[l]ed off from the ambient environment via the thermocompression bonds
formed by sealing rings 314/314' [sic, 312/312’].” Id. at 13:50-56. Thus,
“the IC die [360'] forms the lid of the MEMS die [310'] thereby protecting
the MEMS device from contamination in the future (for example during
subsequent singulation and packaging of the device).” Id. at 13:56-60. The
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Examiner found that in Cohn ʼ067 “the cavity cover 360, 360’ is wider than
the cavity frame 312/312’ and is arranged to overhang the cavity frame.”
RAN 21 (emphasis omitted).
Cohn ʼ902 likewise describes the use of wafer-scale bonding
techniques in the packaging of MEMs devices. Cohn ʼ902 at 1:16-19.
Figures 2A and 2b of Cohn ʼ902 are reproduced below.

Figures 2A and 2B are cross-sectional views of a lid assembly 200 and a
base assembly 220, respectively, of the embodiment of a micro-switch 400
depicted in Figures 4A and 4B. Id. at 6:44-46; 8:15-18. Base assembly 220
(Fig. 2B) has a contact pad 234 carried by a movable structure 230 (id. at
8:26-30) for engaging signal path (i.e., a fixed contact) 208 of lid assembly
200 (Fig. 2A). Id. at 6:61.
Figure 4A is reproduced below.
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Figure 4A is a cross-sectional view of an assembled micro-switch 400. Id. at
9:36-38. This figure shows the switch in the open position. A seal is formed
around cavity 404 (id. at 8:43) by a sealing ring 206 (id. at 6:61), an
insulating ring 214 (id. at 6:62-63), and a seal-landing ring 224. Id. at 8:27-
28. The Examiner found that in Cohn ʼ902 “the cavity cover 202 is wider
than and is arranged to overhang the cavity frame 206 . . . .” RAN 21
(emphasis omitted).
Based on the above teachings, the Examiner concluded:
It would have been obvious to one of ordinary skill in the art, at
the time of the invention to make Johnson’s cavity cover 40
wider than, and arranged to overhang, the cavity frame 25 as a
matter of design choice, as evidenced by any of Borchelt, Cohn
[ʼ]067, and Cohn [ʼ]902. In this regard, it is noted that the
original [ʼ]436 patent nowhere discusses the relative widths of

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the cavity frame and the cavity cover -- much less the
importance of said relative widths.
RAN 22; Answer 20 (emphasis altered). Thus, the Examiner relies on
Borchelt, Cohn ʼ067, and Cohn ʼ902 merely to show that it was known,
when making a device having two wafers separated by a sealing ring that
surrounds a cavity, to make the cover wider (in at least one dimension) than
the sealing ring. The Examiner’s rationale is, in our view, consistent with
the KSR principle that “when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 550 U.S. at 416.
Appellant argues that “it is not enough to simply show that the
references disclose the claim limitations; in addition, ‘it can be important to
identify a reason that would have prompted a person of ordinary skill in the
art to combine the elements as the new invention does.’” Br. 18 & n.13
(quoting KSR, 550 U.S. at 401). The Examiner correctly responded that
“such a rigid adherence to the ‘teaching, suggestion, motivation test’ is not
required, as KSR clearly states.” Answer 43 (quoting Req’s May 2011
Comments 25). As support for this proposition, the Examiner quotes the
following passage from KSR, 550 U.S. at 419:
Helpful insights . . . need not become rigid and
mandatory formulas; and when it is so applied, the TSM test is
incompatible with our precedents. The obviousness analysis
cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on
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the importance of published articles and the explicit content of
issued patents. The diversity of inventive pursuits and of
modem technology counsels against limiting the analysis in this
way. In many fields it may be that there is little discussion of
obvious techniques or combinations, and it often may be the
case that market demand, rather than scientific literature, will
drive design trends. Granting patent protection to advances that
would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining
previously known elements, deprive prior inventions of their
value or utility.
Answer 43 (quoting Req’s May 2011 Comments 25).
For the following reasons, Appellant has not persuaded us that
replacing Johnson’s lid 40 (i.e., the recited “cover”), which has the same
width as seal ring 25 (the recited “cavity frame”), with a lid that is wider
than seal ring 25 and thus resembles the cavity covers shown in Borchelt,
Cohn ʼ067, and Cohn ʼ902, “does more than yield a predictable result,” KSR,
550 U.S. at 416, i.e., yields an unexpected result. See id. (“The fact that the
elements worked together in an unexpected and fruitful manner supported
the conclusion that Adams’s design was not obvious to those skilled in the
art.”) (discussing United States v. Adams, 383 U.S. 39 (1966)). See also
Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed.
Cir. 2009) (“If a patent challenger makes a prima facie showing of
obviousness, the owner may rebut based on ‘unexpected results’ by
demonstrating ‘that the claimed invention exhibits some superior property or
advantage that a person of ordinary skill in the relevant art would have found
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surprising or unexpected.’ In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).”).
One of Appellant’s arguments is:
[N]one of Borchelt, et al., Cohn, et al. (ʼ067) and Cohn, et al.
([ʼ]902) disclose a cavity frame, and therefore cannot disclose a
cavity cover arranged on and overhanging the cavity frame. . .
. . . Rather than the separate cavity frame element as
specifically recited in claim 7, the various sealing materials are
nothing more than adhesives used in water-level bonding in the
fabrication of electronic components prior to dicing.
Br. 26. This argument is unpersuasive because the Examiner reads the
recited “cavity frame” on Johnson’s seal ring 25 rather than relying on
Borchelt, Cohn ʼ067, and Cohn ʼ902 for this recited element. See Keller,
642 F.2d at 426 (one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references).
Appellant also argues:
There is no description [in Borchelt, Cohn ʼ067, and Cohn
ʼ902] that the overhang of the applied art is arranged such that a
cavity frame and cavity cover seal the cavity from penetration
of a plastic housing composition during molding of the
electronic device. In other words, the [ʼ]436 patent uses the
overhang to improve the yield, by having fewer components
damaged by plastic ingress. In contrast, the Cohn, et al.
references have an overhang that is merely a by-product of a
lack of precision in their dicing methods, and which serves no
purpose. That is, any overhang is merely incidental to the
dicing process after wafer level fabrication in Cohn, et al.
(ʼ067) and Cohn, et al. ([ʼ]902).
Br. 27. Appellant’s reliance on the alleged advantage of the overhang
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shown in ʼ436 patent (i.e., accommodating misalignment while an individual
cavity cover is being applied to a cavity frame during device assembly)
has been considered but is misplaced for two reasons.21 The first reason is
that this alleged advantage is not supported by any evidence, such as expert
testimony. As noted by the Examiner, “[t]his [asserted function] is merely a
conclusory observation provided by Patentee.” Answer 37. However, “[i]t
is well settled that unexpected results must be established by factual
evidence. Mere argument or conclusory statements in the specification does
not suffice.” In re Soni, 54 F.3d 746 (Fed. Cir. 1995) (quoting In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). In the absence of such
evidence, it is possible that the overhang depicted in the drawings of the
’436 patent is merely incidental to the dicing process:
[T]he Owner concedes that the prior art discloses an
overhanging cover, but argues that the prior art provides “no
description that the overhang of the applied art is arranged such
that a cavity frame and cavity cover seal the cavity from
penetration of a plastic housing composition,” and that “any
overhang is merely incidental to the dicing process.” [Br. 27.]
The very same is true of the ʼ436 patent specification. It, too,
provides “no description that the overhang of the applied art is
arranged such that a cavity frame and cavity cover seal the
cavity from penetration of a plastic housing composition.”

21 This alleged advantage is entitled to consideration even though it is not
described in the specification of the ʼ436 patent. See In re Chu, 66 F.3d 292,
299 (Fed. Cir. 1995) (evidence and/or arguments traversing a rejection under
35 U.S.C. § 103 need not be contained in the applicant’s or patentee’s
specification).
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Absent such a description, the overhang depicted in the Figures
of the ʼ436 Patent “is merely incidental to the dicing process.”
Answer 40 (quoting Req’s May 2011 Comments 22).
The second reason is that the alleged advantage is not commensurate
in scope with claim 7. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(“Evidence of secondary considerations must be reasonably commensurate
with the scope of the claims. . . . If an applicant demonstrates that an
embodiment has an unexpected result and provides an adequate basis to
support the conclusion that other embodiments falling within the claim will
behave in the same manner, this will generally establish that the evidence is
commensurate with scope of the claims. See In re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978).”). Claim 7 is an apparatus claim and does not
require that the claimed devices be assembled by mounting an individual
cavity cover on a cavity frame of a substrate, the problem addressed by the
alleged advantage of the overhang. Thus, claim 7 is broad enough to read on
mounting a cover wafer on a substrate wafer having cavity frames thereon
and then dicing the resulting wafer sandwich into individual devices, which
is the dicing technique described in Johnson (at 3:66-4:5).22

22 As pointed out by the Examiner (Answer 38), Johnson provides the
claimed sealing function because seal ring 25 and an adhesive layer “secure
lid 40 to die 102 and prevent intrusion of foreign materials during
overmolding and at any other time.” Johnson 3:9-19.
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Nor are we persuaded that the Examiner’s reliance on Cohn ’067 and
Cohn ’902 is misplaced because “the Cohn, et al. references have an
overhang that is merely a by-product of a lack of precision in their dicing
methods, and which serves no purpose.” Br. 27. As pointed out by the
Examiner, KSR does not require rigid adherence to the “teaching,
suggestion, motivation test.” Answer 43. Furthermore, assuming for the
sake of argument that Appellant is correct to describe the overhang in the
Cohn references as “merely a by-product of a lack of precision in their
dicing methods” and “merely incidental to the dicing process after wafer
level fabrication” (Br. 27), Appellant has not explained why considerations
of dicing accuracy would not inherently result in the presence of some
overhang in Johnson or would not suggest providing some overhang in order
to avoid inadvertent removal of seal material.
For the foregoing reasons, the rejection of claim 7 for obviousness
over Johnson in view of Mitsutsuka, Manning, and any one of Borchelt,
Cohn ʼ067, and Cohn ʼ902 is sustained, as is the rejection on the same
ground of dependent claim 11, which Appellant treats as standing or falling
with claim 7. Br. 28.
Appellant’s separate argument against the rejection of independent
claim 12 (Br. 28-30) is unpersuasive for the reasons given in the above
discussion of independent claim 6. The rejection of claim 12 is therefore
sustained, as is the rejection of its dependent claim 13, which Appellant
treats as standing or falling with parent claim 12. Br. 30.
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C. The Rejection of Claims 8-10 Based on Johnson, Mitsutsuka, Manning,
and any one of Borchelt, Cohn ʼ067, and Cohn ʼ902, and further in view
of Onishi
The rejection of dependent claims 8-10 for obviousness over Johnson
in view of Mitsutsuka, Manning, and any one of Borchelt, Cohn ʼ067, and
Cohn ʼ902, further in view Onishi is sustained because Appellant treats this
rejection as standing or falling with rejection of parent claim 7. Br. 30.
III. DECISION
A. The Examiner’s Rejections
We sustain all of the Examiner’s rejections, which are listed below:
1. Claims 1, 5, and 6 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, and Manning;
2. Claims 1, 5, and 6 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Barber, and Manning;
3. Claims 2-4 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, Manning, and Onishi;
4. Claims 7 and 11-13 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, Manning, and any one of Borchelt, Cohn ʼ067, and
Cohn ʼ902; and
5. Claims 8-10 under 35 U.S.C. § 103(a) for obviousness over
Johnson, Mitsutsuka, Manning, and any one of Borchelt, Cohn ʼ067, and
Cohn ʼ902, and further in view of Onishi.
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The Examiner’s decision that claims 1-13 are unpatentable over the
prior art is accordingly affirmed.

B. The Rejections Not Adopted by the Examiner
The Examiner’s determination not to adopt the following rejections is
sustained:
1. Claims 1, 3, and 5 under 35 U.S.C. § 103(a) for obviousness over
Johnson;
2. Claim 3 under 35 U.S.C. § 103(a) for obviousness over Johnson in
view of Mitsutsuka and Manning; and
3. Claim 3 under 35 U.S.C. § 103(a) for obviousness over Johnson in
view of Barber and Manning.

Examiner’s Rejections: AFFIRMED
Examiner’s Determination Not to Adopt Proposed Rejections: AFFIRMED

Appeal 2013-003800
Reexamination Control 95/001,303
Patent 7,268,436 B2

49
For Patent Owner:

Kathy Manke
Avago Technologies Limited
4380 Ziegler Road
Fort Collins CO 80525

For Third Party Requester:

PERKINS COIE LLP
PATENT-SEA
P.O. Box 1247
Seattle, WA 98111-1247