Ex Parte Acar et al

Patent Trial and Appeal Board

Mar 27, 2018

13600460 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/600,460 08/31/2012
31817 7590 03/29/2018
SCHWABE, WILLIAMSON & WYATT, P.C.
1211SW5th Avenue, Suite 1600
Portland, OR 97204
FIRST NAMED INVENTOR
ErkanAcar
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
42P45485 3876
EXAMINER
LE,SONT
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
03/29/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDocketing@SCHWABE.com
intelparalegal@schwabe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERKAN ACAR, POOY A TADA YON, ARMEN Y. BALIAN,
and ETHAN CAUGHEY
Appeal2017-006206
Application 13/600,460
Technology Center 2800
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision to reject claims 1, 4--7, 9, and 12-15, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 In our Decision, we refer to the Specification filed August 31, 2012
("Spec."); Final Office Action docketed January 21, 2016 ("Final Act.");
Advisory Action docketed March 18, 2016 ("Adv. Act."); Appeal Brief filed
November 2, 2016, as corrected November 21, 2016 ("Appeal Br.");
Examiner's Answer docketed February 17, 2017 ("Ans."); and Reply Brief
filed March 2, 2017 ("Reply Brief').
2 Appellants identify Intel Corporation as the real party in interest.
App. Br. 3.
Appeal2017-006206
Application 13/600,460
We REVERSE.
The Claimed Invention
Appellants' disclosure relates to a test system for electrical testing of
integrated circuits before packaging. Spec. i-fi-f l-2. The claimed test system
includes a test printed circuit board (PCB), a flip chip package mounted on
the PCB, one or more test probes coupled to the flip chip package and a first
integrated circuit (IC) coupled to the test probes to enable testing of the first
IC using electrical circuitry of the flip chip package. Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief, as
amended November 21, 2016 (key disputed claim language italicized and
bolded):
1. A test system comprising:
a test printed circuit board (PCB); and
a multi-chip package mounted on the test PCB,
compnsmg:
a flip chip package;
one or more test probes having a first end coupled
to the flip chip package;
a central processing unit (CPU) integrated circuit
(IC) coupled to a second end of the test probes to enable
testing of the first product IC using electrical circuitry of
the flip chip package; and
a chipset IC mounted on the flip chip package to
communicate with the CPU IC during testing of the CPU
IC via routing between the CPU IC and the chipset IC.
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Application 13/600,460
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Sugita et al., US 2005/0099199 Al May 12, 2005
(hereinafter "Sugita")
Mooyman-Beck et al., US 2011/0148456 Al June 23, 2011
(hereinafter "Mooyman-Beck")
The Rejection
On appeal, the Examiner maintains (Ans. 2) the following rejection3,4 :
Claims 1, 4--7, 9, and 12-15 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Mooyman-Beck in view of
Sugita. Adv. Act. 2-8.
3 The Examiner's rejection of claims 1, 4--7, 9, and 12-15 under
35 U.S.C. § 102(b) as being anticipated by Mooyman-Beck (Final Act. 4)
has been withdrawn by the Examiner in the Advisory Action (Adv. Act. 2)
as a result of Appellants' March 1, 2016 amendments to the claims being
entered. Ans. 3. In the Advisory Action (Adv. Act. 2-8), the Examiner
entered a new ground of rejection of claims 1, 4--7, 9, and 12-15 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Mooyman-Beck and Sugita. See Ans. 2.
4 The Examiner's rejection of claims 8 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Mooyman-Beck and Miller et al.
(US 2008/0100320 Al; publ. May 1, 2008) (Final Act. 9) is rendered moot
as a result of claims 8 and 16 being cancelled in connection with Appellants'
March 1, 2016 amendments to the claims. Appeal Br. 10 (acknowledging
that the Examiner's rejection regarding claims 8 and 6 is "obviated by the
cancellation of the claims").
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Application 13/600,460
OPINION
The Examiner determines that the combination of Mooyman-Beck
and Sugita suggests a testing system satisfying all of the limitations of claim
1 and thus, concludes that the combination would have rendered the claim
obvious. Adv. Act. 2-5 (citing Mooyman-Beck, Fig. 9, i-fi-134--36; Sugita,
Fig. 1, i-fi-f 13, 37--46); Ans. 4--5.
Regarding the "chipset IC mounted on a flip chip package" recitation
of claim 1, the Examiner relies on element 62 of Figure 9 of Mooyman-Beck
for disclosing this limitation. Ans. 4. In particular, the Examiner finds that
because Mooyman-Beck discloses that instrument controller 51 and
measurement instrument 50 are to be embedded in silicon substrate 62,
substrate 62 is an "IC" and the components form a "chipset" in the substrate.
Id. at 4--5; see also Adv. Act. 3--4 (interpreting substrate 62 to be an
"integrated chip").
Appellants argue that the Examiner's rejection should be reversed
because "there is no disclosure in Mooyman-Beck of a multi-chip package
including a CPU integrated circuit (IC) and a chipset IC mounted on a flip
chip package." App. Br. 7. See also Reply Br. 4 (arguing that the Examiner
has "failed to show where in Mooyman-Beck the flip chip package is
disclosed with a mounted CPU IC and chipset IC").
In particular, Appellants contend that Mooyman-Beck does not
disclose or suggest a chipset IC mounted on a flip chip package because "a
controller embedded within a silicon substrate does not constitute a chipset
IC," as required by the claim. App. Br. 7.
We agree with Appellants' argument in this regard. On the record
before us, we are not persuaded that a preponderance of the evidence
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Appeal2017-006206
Application 13/600,460
supports the Examiner's finding that Figure 9 of Mooyman-Beck discloses
or suggests "a chipset IC mounted on the flip chip package," as recited in the
claim 1.
Mooyman-Beck discloses a method and device for measuring a signal
of a die to be placed within a package comprising, among other components,
a first interposer 60 and a second interposer 62. Mooyman-Beck i-fi-f l, 8, 34.
Mooyman-Beck further discloses that the second interposer 62 is a "silicon-
carrier substrate" having signal paths 64 at predetermined positions, and that
the signal paths 64 may comprise TSVs (Through-Silicon Vias). Id. i134.
Although Mooyman-Beck discloses that measurement instruments 50 and
instrument controller 51 are embedded in silicon substrate 62 (Mooyman-
Beck i134, Figure 9), there is no teaching or suggestion that the silicon
substrate is or would have been construed by one of ordinary skill in the art
as being a "chipset IC mounted on the flip chip package," as required by the
claim.
The Examiner does not direct us to sufficient evidence in the record
that Mooyman-Beck's silicon substrate 62 with such embedded components
would constitute or necessarily function as a chipset IC, as recited in the
claim. The Examiner also does not provide an adequate technical
explanation explaining why one of ordinary skill would have had reason to
modify the silicon substrate 62 to serve or operate as a chipset IC in the
manner claimed. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (requiring "reasoning with some rational underpinning to support the
legal conclusion of obviousness") (quoting In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006)). The fact that Mooyman-Beck discloses that a controller
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Appeal2017-006206
Application 13/600,460
and measurement instruments may be embedded in the substrate, without
more, is insufficient to sustain the Examiner's rejection.
The Examiner's findings regarding the teachings of the Sugita
reference at pages 4---6 of the Answer and pages 3-5 of the Advisory Action
are not persuasive because Sugita's teachings do not cure the above-noted
deficiencies in Mooyman-Beck's disclosure and the Examiner's comments
do not adequately address Appellants' principal argument that the cited art
does not disclose or suggest the "chipset IC mounted on the flip chip
package" limitation of claim 1. Kahn, 441 F.3d at 988 (Fed. Cir. 2006)
(holding "rejections ... cannot be sustained by mere conclusory
statements").
We, therefore, cannot sustain the Examiner's determination that claim
1 's subject matter would have been obvious to a person having ordinary skill
in the art in view of Mooyman-Beck and Sugita.
Because claims 4--7 depend from claim 1 and claims 9 and 12-15
recite a "mounting a chipset IC included in the multi-chip package on the
flip chip package" limitation similar to the "a chipset IC mounted on the flip
chip package" recitation of claim 1, we also cannot sustain the Examiner's
rejection of these claims.
Accordingly, we reverse the Examiner's rejection of claims 1, 4--7, 9,
and 12-15 under 35 U.S.C. § 103(a) as being as being unpatentable over the
combination of Mooyman-Beck and Sugita.
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Appeal2017-006206
Application 13/600,460
DECISION/ORDER
The Examiner's rejection of claims 1, 4--7, 9, and 12-15 is reversed.
It is ordered that the Examiner's decision is reversed.
AFFIRMED
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