Ex Parte Akram et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10328558 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SALMAN AKRAM and SYED SAJID AHMAD
____________

Appeal 2009-3182
Application 10/328,558 1
Technology Center 2800
____________

Decided2: June 2, 2009
____________

Before MAHSHID D. SAADAT, SCOTT R. BOALICK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed Dec. 23, 2002. Application 10/328,558 is a continuation
of U.S. Patent No. 6,525,408, filed Mar. 27, 2002, which is a divisional of
U.S. Patent No. 6,569,753, filed Jun. 8, 2000. The real party in interest is
Micron Technology, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-3182
Application 10/328,558

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-12 and 14-36, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to semiconductor devices having collars
fabricated around the peripheries of contact pads to secure conductive
structures to the contact pads. The collars are fabricated using
stereolithography. (Spec. paragraph [0002].)

Claims 1 and 16 are exemplary:
1. A semiconductor device component, comprising:

a substrate having contact pads exposed at a surface thereof; and

at least one collar at least partially surrounding at least one contact
pad of the contact pads and secured to at least one of the substrate and the at
least one contact pad, at least a portion of the at least one contact pad being
exposed through the at least one collar, the at least one collar protruding
from the surface so as to laterally contain material of at least a base portion
of a conductive structure securable to the at least one contact pad.

16. A semiconductor device component, comprising:

at least one contact; and

2
Appeal 2009-3182
Application 10/328,558

a structure laterally surrounding at least a portion of the at least one
contact, the structure including:

a plurality of adjacent, mutually adhered regions comprising the same
material; and

a receptacle extending through the structure and formed by each of the
plurality of adjacent, mutually adhered regions.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tilly US 6,297,562 B1 Oct. 2, 2001
(filed Sept. 20, 1999)

Carper US 5,608,260 Mar. 4, 1997

Claims 1, 2, 6-12, 14-19, 21-23, and 27-36 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Tilly.
Claims 3-5, 20, and 24-26 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Tilly and Carper.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief and the Answer for their respective details. Except as
noted in this decision, Appellants have not presented any substantive
arguments directed separately to the patentability of the dependent claims.
In the absence of a separate argument with respect to those claims, they
stand or fall with the representative independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Brief have not been considered and are deemed to be waived. See id.

3
Appeal 2009-3182
Application 10/328,558

ISSUES
§ 102 Rejection - Tilly
First, with respect to independent claim 1, Appellants argue that Tilly
does not teach the limitation of “at least one contact pad being exposed
through . . . at least one collar.” (Br. 7-8.) With respect to dependent claim
6, Appellants argue that Tilly does not teach the limitation of a “substrate
[that] comprises a semiconductor wafer.” (Br. 8.) With respect to
dependent claim 12, Appellants argue that Tilly does not teach the limitation
of an “aperture . . . configured to define a shape of at least a portion of the
conductive structure.” (Br. 9.) With respect to dependent claim 15,
Appellants argue that Tilly does not teach the limitation of a
“collar . . . configured to at least partially align a preformed conductive
structure with . . . at least one contact pad.” (Br. 9.)
Second, with respect to independent claim 16, Appellants argue that
Tilly does not teach the limitation of “a structure . . . including . . . a plurality
of adjacent, mutually adhered regions.” (Br. 9-10.) With respect to
dependent claim 17, Appellants argue that Tilly does not teach the limitation
of a “structure . . . configured to prevent a discrete conductive structure . . .
from extending laterally.” (Br. 10.) With respect to dependant claim 19,
Appellants argue that Tilly does not teach the limitation of a “surface . . .
configured to form a shape of at least . . . [a] portion of . . . [a] conductive
structure.” (Br. 10.) With respect to dependant claim 21, Appellants argue
that Tilly does not teach the limitation of a “structure . . . configured to
facilitate alignment of . . . [a] discrete conductive structure with . . . at least
one contact.” (Br. 10-11.)
4
Appeal 2009-3182
Application 10/328,558

Third, with respect to independent claim 22, Appellants argue that
Tilly does not teach the limitation of a “surface of the substrate being
exposed between the plurality of collars while ends of the plurality of collars
remain exposed.” (Br. 11.) With respect to dependant claim 27, Appellants
argue that Tilly does not teach the limitation of a “substrate [that] comprises
a semiconductor wafer.” (Br. 12.) With respect to dependant claim 33,
Appellants argue that Tilly does not teach the limitation of an “aperture . . .
configured to define a shape of at least a portion of the conductive
structure.” (Br. 12.) With respect to claim 36, Appellants argue that Tilly
does not teach the limitation of a “collar . . . configured to at least partially
align a preformed conductive structure with . . . at least one contact pad.”
(Br. 12.)
Appellants’ arguments present the following issue:
Have Appellants shown that the Examiner erred in rejecting claims 1,
2, 6-12, 14-19, 21-23, and 27-36 under 35 U.S.C. § 102(e)?
The resolution of this issue turns on the following subsidiary issues:

1. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of “at least one contact pad being exposed
through . . . at least one collar,” as recited in claim 1?

2. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of a “substrate [that] comprises a semiconductor
wafer,” as recited in claims 6 and 27?

5
Appeal 2009-3182
Application 10/328,558

3. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of an “aperture . . . configured to define a shape
of at least a portion of the conductive structure,” as recited in claims 12
and 33?

4. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of a “collar . . . configured to at least partially
align a preformed conductive structure with . . . at least one contact pad,” as
recited in claims 15 and 36?

5. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of “a structure . . . including . . . a plurality of
adjacent, mutually adhered regions,” as recited in claim 16?

6. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of a “structure . . . configured to prevent a
discrete conductive structure . . . from extending laterally,” as recited in
claim 17?

7. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of a “surface . . . configured to form a shape of at
least . . . [a] portion of . . . [a] conductive structure,” as recited in claim 19?

8. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of “a structure . . . configured to facilitate
6
Appeal 2009-3182
Application 10/328,558

alignment of . . . [a] discrete conductive structure with . . . at least one
contact,” as recited in claim 21?

9. Have Appellants shown that the Examiner erred in finding that
Tilly teaches the limitation of a “surface of the substrate being exposed
between the plurality of collars while ends of the plurality of collar remain
exposed,” as recited in claim 22?

§ 103 Rejection - Tilly/Carper
Appellants argue that the Examiner erred in rejecting dependent
claims 3-5, 20, and 26 for the reasons previously argued with respect to
independent claims 1, 16, and 22, from which these claims ultimately
depend. (Br. 14.) Appellants also argue that the Examiner has not
established a prima facie case of obviousness in rejecting dependent claims
3-5, 20 and 24-26 because “the teachings of Tilly and Carper are totally
unrelated” (Br. 14) and when the references are considered in their entireties,
“one of ordinary skill in the art would have had no reason to expect that the
asserted combination . . . would have been successful” (Br. 15).
Appellants’ arguments present the following issues:
Have Appellants shown that the Examiner erred in rejecting 3-5, 20
and 24-26 under 35 U.S.C. § 103(a)?
The resolution of this issue turns on the following subsidiary issue:
Have Appellants shown that the Examiner erred by improperly
combining the applied references?

7
Appeal 2009-3182
Application 10/328,558

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Specification
1. With reference to Figure 3, Appellants state that “[s]ubstrate 30 has
contact pads 32, or terminals, exposed at a surface 34 thereof.” (Spec.
paragraph [0045].) Figure 3 illustrates that contact pads 32 and
contact pads 12 are in direct contact with a conductive structure 20.

2. With reference to Figure 8, Appellants provide a description of
“collars 50 on semiconductor devices 10, in this case semiconductor
dice, that have yet to be singulated, or diced, from a wafer 72.” (Spec.
paragraph [0054].) In another embodiment, Appellants describe that
“collars 50, 50', 50" can also be fabricated on or secured . . . to
individual semiconductor devices 10.” (Spec. paragraph [0055].)

Tilly
3. Tilly is related to “bond pads of semiconductor chips.” (Col. 1,
ll. 5-7.) For conventional semiconductor chips, Tilly describes that a
“wire is bonded [to] each of . . . the bond pads” and that “[e]ach of
these bond wires electrically connects the semiconductive chip with a
circuit or component of a substrate.” (Col. 1, ll. 15-19.)

4. Tilly describes that “[t]he chip 20 is generally an unpackaged
semiconductive device cut from a wafer, typically an integrated
8
Appeal 2009-3182
Application 10/328,558

circuit.” (Col. 3, ll. 23-25; fig. 1.) In another embodiment, Tilly
teaches that “the chip 20 can be a chip that is used in a multi-module
unit having a plurality of chips 20 stacked on top of each other.”
(Col. 3, ll. 61-63.)

5. Tilly describes bonding a chip 20 to a substrate 32. (Col. 4, ll. 11-12;
fig. 3.) A conductive stud 40 is bonded to each of the bond pads 24 of
the chip 20 (col. 4, ll. 21-22) and to contacts 34 of the substrate 32
(col. 4, ll. 29-30). Tilly describes that “[t]he conductive studs 40,
bond pads 24, and contacts 34 have been coated with a dielectric
material 52.” (Col. 9, ll. 21-22; fig. 5.) The dielectric material 52 can
be an epoxy resin. (Col. 9, ll. 22-23.)

6. Figure 5 illustrates that the dielectric material 52 at least partially
surrounds and laterally contains the conductive studs 40 and that the
interior surface of the dielectric material 52 has the same shape as the
conductive studs 40. Figure 5 also illustrates that the dielectric
material 52, the conductive studs 40 and the bond pads 24 are aligned;
and that the ends of the dielectric material 52 are in direct contact with
contacts 34.

Carper
7. Carper is related to “[s]emiconductor packages . . . formed by bonding
a semiconductor chip to a metallic leadframe and encapsulating in
plastic.” (Col. 2, l. 66 to col. 3, l. 1.) Carper describes depositing an
insulating film 24 on a leadframe 20, followed by forming openings in
9
Appeal 2009-3182
Application 10/328,558

the insulating film 24 to define contact regions 26. (Col. 3, ll. 33-37;
fig. 2.)

8. The insulating film 24 can be formed of a photo-imageable material
(col. 3, ll. 53-54), which has the advantage of requiring fewer process
steps compared to non-photo-imageable materials (col. 4, ll. 1-2).

PRINCIPLES OF LAW
On appeal, all timely filed evidence and properly presented arguments
are considered by the Board. See In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. When
that burden is met, the burden then shifts to the Applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding rebuttal
evidence unpersuasive). If the Applicant produces rebuttal evidence of
adequate weight, the prima facie case of unpatentability is dissipated. In re
Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in view
of the entire record. Id. However, on appeal to the Board it is the
Appellants’ burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant
can overcome a rejection [for obviousness] by showing insufficient evidence
of prima facie obviousness or by rebutting the prima facie case with
evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet,
149 F.3d 1350, 1355 (Fed. Cir. 1998)).
10
Appeal 2009-3182
Application 10/328,558

“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The “ordinary and customary meaning of a claim term is the
11
Appeal 2009-3182
Application 10/328,558

meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Id. at 1313.
The determination of patentability in a product-by-process claim is
based on the product itself, even though the claim may be limited and
defined by the process. In re Luck, 476 F.2d 650, 653 (CCPA 1973). That
is, the product in such a claim is unpatentable if it is the same as or obvious
from the product of the prior art, even if the “prior product was made by a
different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). “The
Patent Office bears a lesser burden of proof in making out a case of prima
facie obviousness for product-by-process claims because of their peculiar
nature than . . . when a product is claimed in the conventional fashion.” In
re Fessmann, 489 F.2d 742, 744 (CCPA 1974). “Where a product-by-
process claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the 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).
A patent applicant is free to recite features of an apparatus either
structurally or functionally. “Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Where the Patent Office has reason to
believe that a functional limitation asserted to be critical may in fact be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter in the prior art does not possess
the characteristic relied on. Id.
12
Appeal 2009-3182
Application 10/328,558

ANALYSIS
We do not find Appellants’ arguments that the Examiner erred in
rejecting claims 1, 2, 6-12, 14-19, 21-23 and 27-36 under 35 U.S.C. § 102(e)
to be meritorious. Likewise, we do not find Appellants’ arguments that the
Examiner erred in rejecting claims 3-5, 20 and 24-26 under 35 U.S.C.
§ 103(a) to be meritorious.

§ 102 Rejection - Tilly
Claims 1, 2, 6-12, 14-19, 21-23 and 27-36
Claim 1
Appellants’ arguments (Br. 7-8) that Tilly does not teach the
limitation of “at least one contact pad being exposed through . . . at least one
collar,” as recited in independent claim 1, are not persuasive.
The Examiner interpreted claim 1 as a product-by-process claim and
found that “the final device structure of Tilly is the same” as “the claimed
device structure of [the] present invention” (Ans. 10.) The Examiner found
that the chip 20 of Tilly corresponds to the claimed “substrate,” the bond
pads 24 of Tilly corresponds to the claimed “contact pads,” the dielectric
material 52 of Tilly corresponds to the claimed “at least one collar,” and the
conductive studs 40 of Tilly correspond to the claimed “conductive
structure.” (Ans. 3.) The Examiner also found that the bond pads 24 (i.e.,
the claimed “contact pads”) of Tilly were “exposed through” the dielectric
52 (i.e., the claimed “collar”) to the conductive studs 40 (i.e., the claimed
“conductive structure.”) (Ans. 11.) We agree with the Examiner.
13
Appeal 2009-3182
Application 10/328,558

Figure 5 of Tilly teaches the final semiconductor device component
recited in claim 1. (See FF 5-6.) In articulating that “the final device
structure of Tilly is the same” as “the claimed device structure of [the]
present invention,” (Ans. 10) the Examiner provided a rationale tending to
show that the semiconductor device component of claim 1 appears to be the
same or similar to that of Tilly. Therefore, “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.
Appellants presented arguments distinguishing the manufacturing
steps of Tilly from the semiconductor device component of claim 1. (Br. 8.)
However, a patentability determination of a product-by-process claim is
based on the product itself. See Thorpe, 777 F.2d at 697. Thus, Appellants
have not provided any convincing evidence to illustrate that the
semiconductor device component of claim 1 possesses an unobvious
difference over the semiconductor chip of Tilly.
Appellants also argue that Tilly does not teach the limitation of “at
least one contact pad being exposed through . . . at least one collar.” (Br. 8.)
However, under the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that “exposed” can be construed
as the exposure of the bond pads 24 (i.e., the claimed “contact pad”) to the
conductive studs 40 (i.e., the claimed “conductive structure”). With
reference to Figure 3, Appellants’ Specification describes that “[s]ubstrate
30 has contact pads 32, or terminals, exposed at a surface 34 thereof.”
(FF 1.) Figure 3 of the Specification illustrates that both contact pads 32 and
contact pads 12 are in direct contact with the conductive structure 20.
(FF 1.) In other words, the Specification teaches that contact pads 32 and
14
Appeal 2009-3182
Application 10/328,558

contact pads 12 are “exposed” to the conductive structure 20. (See FF 1.)
Thus, we find the Examiner’s construction of “exposed” to be reasonable
and consistent with the Specification. Appellants have not pointed to any
particular definition of “exposed” in the Specification that would lead to a
different interpretation.
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of “at least one contact pad being
exposed through . . . at least one collar,” as recited in claim 1.

Claims 6 and 27
Appellants’ arguments (Br. 8, 12) that Tilly does not teach the
limitation of a “substrate [that] comprises a semiconductor wafer,” as recited
in dependent claims 6 and 27, are not persuasive.
The Examiner found that the limitation of “a semiconductor wafer
including a plurality of semiconductor dice” corresponds to chip 20 of Tilly.
(Ans. 4, 7, 11.) We agree with the Examiner.
Appellants argue that “Tilly neither expressly nor inherently describes
a semiconductor device component including a substrate that comprises a
semiconductor wafer” because Tilly teaches that the “chip 20 . . . has already
been cut from a wafer.” (Br. 8, 12.) However, claims 6 and 27 recite, “a
semiconductor wafer including a plurality of semiconductor dice” (emphasis
added). Under the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that Tilly teaches the limitation of
“a semiconductor wafer including a plurality of semiconductor dice.”
Appellants’ Figure 8 illustrates semiconductor devices 10 as
semiconductor dice that have yet to be singulated. (See FF 2.) Appellants’
15
Appeal 2009-3182
Application 10/328,558

Specification describes that “collars 50, 50', 50" can also be fabricated on or
secured . . . to individual semiconductor devices 10.” (FF 2.) Because the
Specification describes forming collars on individual semiconductor devices
10 (i.e., semiconductor dice) (FF 2), “semiconductor dice” can reasonably be
interpreted as individual semiconductor devices.
Moreover, Tilly teaches that “[t]he chip 20 is generally an unpackaged
semiconductive device cut from a wafer, typically an integrated circuit.”
(FF 4.) In another embodiment, Tilly teaches that “the chip 20 can be a chip
that is used in a multi-module unit having a plurality of chips 20 stacked on
top of each other.” (FF 4.) In other words, Tilly teaches that chip 20 can
include a plurality of chips. (FF 4.) Thus, Tilly teaches the limitation of “a
semiconductor wafer including a plurality of semiconductor dice.”
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches a “substrate [that] comprises a semiconductor
wafer,” as recited in dependent claims 6 and 27.

Claims 12 and 33
Appellants’ arguments (Br. 9, 12) that Tilly does not teach the
limitation of an “aperture . . . configured to define a shape of at least a
portion of the conductive structure,” as recited in dependent claims 12 and
33, are not persuasive.
The Examiner interpreted claims 12 and 33 as product-by-process
claims. (Ans. 11-12.) We note that claims 12 and 33 depend from claims 11
and 32, respectively, which recite that a “collar includes an aperture.” The
Examiner found that the dielectric material 52 of Tilly (i.e., the claimed
“collar”) surrounds the shape of at least a portion of the conductive studs 40
16
Appeal 2009-3182
Application 10/328,558

(i.e., the claimed “conductive structure”) and thus, Tilly teaches the
limitation “configured to define a shape of at least a portion of the
conductive structure.” (Ans. 12.) We agree with the Examiner.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process
claims 12 and 33 possess an unobvious difference over the semiconductor
chip of Tilly.
We further note that the claim language “configured to define a shape
of at least a portion of the conductive structure” is a functional limitation and
defines the “aperture” by what it does, rather than structurally. See
Schreiber, 128 F.3d at 1478. Thus, the “aperture” must have the ability to
“define a shape of at least a portion of the conductive structure.” Tilly
teaches that “[t]he conductive studs 40, bond pads 24, and contacts 34 have
been coated with a dielectric material 52.” (FF 5.) Thus, because Tilly
teaches that the dielectric material 52 (i.e., the claimed “collar [that] includes
an aperture”) coats the conductive studs 40 (i.e., the claimed “conductive
structure”), the interior surface of dielectric material 52 has the same shape
as the exterior surface of the conductive stud 40. (FF 5-6.) In other words,
the dielectric material 52 “define[s] a shape of at least a portion of” the
conductive studs 40. (FF 5-6.)
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of an “aperture . . . configured to
define a shape of at least a portion of the conductive structure,” as recited in
dependent claims 12 and 33.

17
Appeal 2009-3182
Application 10/328,558

Claims 15 and 36
Appellants’ arguments (Br. 9, 12) that Tilly does not teach the
limitation of a “collar . . . configured to at least partially align a preformed
conductive structure with . . . at least one contact pad,” as recited in
dependent claims 15 and 36, are not persuasive.
The Examiner interpreted claims 15 and 36 as product-by-process
claims. (Ans. 12-13.) The Examiner found that Figure 5 of Tilly illustrates
the dielectric material 52 (i.e., the claimed “collar”) at least partially aligned
with the conductive studs 40 (i.e., the claimed “conductive structure”) and
the bond pads 24 (i.e., the claimed “contact pad”). (Ans. 13.) We agree
with the Examiner.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process
claims 15 and 36 possess an unobvious difference over the semiconductor
chip of Tilly.
We further note that the claim language “configured to at least
partially align a preformed conductive structure with . . . at least one contact
pad” is a functional limitation and defines the “collar” by what it does, rather
than structurally. See Schreiber, 128 F.3d at 1478. Thus, the “collar” must
have the ability to “at least partially align a preformed conductive structure
with . . . at least one contact pad.” Figure 5 of Tilly illustrates that the
dielectric material 52 (i.e., the claimed “collar”) is at least partially aligned
with the conductive studs 40 (i.e., the claimed “conductive structure”) and
the bond pads 24 (i.e., the claimed “contact pad”). (FF 6.) In other words,
the dielectric material 52 “at least partially align[s]” the conductive studs 40
with the bond pads 24. (FF 6.)
18
Appeal 2009-3182
Application 10/328,558

Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of a “collar . . . configured to at least
partially align a preformed conductive structure with . . . at least one contact
pad,” as recited in dependent claims 15 and 36.

Claim 16
Appellants’ arguments (Br. 9-10) that Tilly does not teach the
limitation of “a structure . . . including . . . a plurality of adjacent, mutually
adhered regions,” as recited in independent claim 16 are not persuasive.
The Examiner interpreted claim 16 as a product-by-process claim and
found that Figure 5 of Tilly illustrates “the same device structure of the
present invention.” (Ans. 13.) The Examiner found that the bond pads 24 of
Tilly correspond to the claimed “at least one contact,” and the dielectric
material 52 of Tilly corresponds to the claimed “structure.” (Ans. 5.) We
agree.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process claim
16 possesses an unobvious difference over the semiconductor chip of Tilly.
In particular, Appellants have not provided any convincing evidence
“establishing an unobvious difference” between the final product of the
claimed “a structure . . . including . . . a plurality of adjacent, mutually
adhered regions” and the dielectric material 52 of Tilly. See Marosi, 710
F.2d at 803.
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of “a structure . . . including . . . a
19
Appeal 2009-3182
Application 10/328,558

plurality of adjacent, mutually adhered regions,” as recited in independent
claim 16.

Claim 17
Appellants’ arguments (Br. 10) that Tilly does not teach the limitation
of a “structure . . . configured to prevent a discrete conductive structure . . .
from extending laterally,” as recited in dependent claim 17 are not
persuasive.
The Examiner interpreted claim 17 as a product-by-process claim.
(Ans. 13-14.) The Examiner found that “the final device structure of Tilly is
the same” as “the claimed device structure of [the] present invention” (Ans.
13-14). The Examiner also found that Figure 5 of Tilly teaches the dielectric
material 52 (i.e., the claimed “structure”) preventing the conductive studs 40
(i.e., the claimed “conductive structure”) from extending laterally.
(Ans. 14.) We agree with the Examiner.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process claim
17 possesses an unobvious difference over the semiconductor chip of Tilly.
We further note that the claim language “configured to prevent a
discrete conductive structure . . . from extending laterally” is a functional
limitation and defines the “structure” by what it does, rather than
structurally. See Schreiber, 128 F.3d at 1478. Thus, the “structure” must
have the ability to “to prevent a discrete conductive structure . . . from
extending laterally.” Figure 5 of Tilly illustrates that dielectric material 52
(i.e., the claimed “structure”) surrounds conductive studs 40 (i.e., the
claimed “conductive structure”) such that the conductive studs 40 do not
20
Appeal 2009-3182
Application 10/328,558

extend laterally beyond the bond pads 24. (FF 6.) In other words, the
dielectric material 52 “prevents” the conductive studs 40 “from extending
laterally.” (FF 6.)
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of a “structure . . . configured to
prevent a discrete conductive structure . . . from extending laterally,” as
recited in dependent claim 17.

Claim 19
Appellants’ arguments (Br. 10) that Tilly does not teach the limitation
of a “surface . . . configured to form a shape of at least . . . [a] portion of . . .
[a] conductive structure,” as recited in dependent claim 19 are not
persuasive.
The Examiner interpreted claim 19 as a product-by-process claim.
(Ans. 14-15.) We note that claim 19 depends from claim 18, which recites
“a surface of the receptacle.” The Examiner found that the dielectric
material 52 of Tilly (i.e., the claimed “receptacle”) surrounds the shape of
the conductive studs 40 (i.e., the claimed “conductive structure”) and thus
Tilly teaches the limitation “configured to form a shape of at least . . . [a]
portion of . . . [a] conductive structure.” (Ans. 15.) We agree with the
Examiner.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process claim
19 possesses an unobvious difference over the semiconductor chip of Tilly.
We further note that the claim language “configured to form a shape
of at least . . . [a] portion of . . . [a] conductive structure” is a functional
21
Appeal 2009-3182
Application 10/328,558

limitation and defines “a surface of the receptacle” by what it does, rather
than structurally. See Schreiber, 128 F.3d at 1478. Thus, the “surface of the
receptacle” must have the ability to “form a shape of at least . . . [a] portion
of . . . [a] conductive structure.” Tilly teaches that “[t]he conductive studs
40, bond pads 24, and contacts 34 have been coated with a dielectric
material 52.” (FF 5.) Because Tilly teaches that the dielectric material 52
(i.e., claimed “receptacle”) coats the conductive studs 40 (i.e., the claimed
“conductive structure”), the interior surface of the dielectric material 52 has
the same shape as at least a portion of the exterior surface of the conductive
stud 40. (FF 6.) In other words, the dielectric material 52 “form[s] a shape
of at least . . . [a] portion of” the conductive studs 40. (FF 6.)
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of a “surface . . . configured to form
a shape of at least . . . [a] portion of . . . [a] conductive structure,” as recited
in dependent claim 19.

Claim 21
Appellants’ arguments (Br. 10-11) that Tilly does not teach the
limitation of “a structure . . . configured to facilitate alignment of . . . [a]
discrete conductive structure with . . . at least one contact,” as recited in
dependent claim 21 are not persuasive.
The Examiner interpreted claim 21 as a product-by-process claim.
(Ans. 12-13.) The Examiner found that Figure 5 of Tilly illustrates the
dielectric material 52 (i.e., the claimed “structure”) aligned with the
conductive studs 40 (i.e., the claimed “conductive structure”) and the bond
22
Appeal 2009-3182
Application 10/328,558

pads 24 (i.e., the claimed “contact”). (Ans. 13.) We agree with the
Examiner.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process claim
21 possesses an unobvious difference over the semiconductor chip of Tilly.
We further note that the claim language “configured to facilitate
alignment of . . . [a] discrete conductive structure with . . . at least one
contact” is a functional limitation and defines the “structure” by what it
does, rather than structurally. See Schreiber, 128 F.3d at 1478. Thus, the
“structure” must have the ability to “facilitate alignment of . . . [a] discrete
conductive structure with . . . at least one contact.” Figure 5 of Tilly
illustrates that the dielectric material 52 (i.e., the claimed “structure”) is
aligned with the conductive studs 40 (i.e., the claimed “conductive
structure”) and the bond pads 24 (i.e., the claimed “contact”). (FF 6.) In
other words, the dielectric material 52 “facilitate[s] alignment” of the
conductive studs 40 with the bond pads 24. (FF 6.)
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of a “structure . . . configured to
facilitate alignment of . . . [a] discrete conductive structure with . . . at least
one contact,” as recited in dependent claim 21.

Claim 22
Appellants’ arguments (Br. 11) that Tilly does not teach the limitation
of a “surface of the substrate being exposed between the plurality of collars
while ends of the plurality of collars remain exposed,” as recited in
independent claim 22 are not persuasive.
23
Appeal 2009-3182
Application 10/328,558

The Examiner interpreted claim 22 as a product-by-process claim and
found that “the final device structure of Tilly is the same” as “the claimed
device structure of [the] present invention.” (Ans. 10.) The Examiner found
that the chip 20 of Tilly corresponds to the claimed “substrate,” the bond
pads 24 of Tilly corresponds to the claimed “contact pads,” the dielectric
material 52 of Tilly corresponds to the claimed “plurality of collars,” and the
conductive studs 40 of Tilly correspond to the claimed “conductive
structure.” (Ans. 6-7.) The Examiner found that the bond pads 24 (i.e., the
claimed “contact pads”) of Tilly were “exposed through” dielectric 52 (i.e.,
the claimed “plurality of collars”) to conductive studs 40 (i.e., the claimed
“conductive structure.”) (Ans. 11.) We agree with the Examiner.
Similar to the previous discussion of claim 1, Appellants have not
provided any convincing evidence to illustrate that product-by-process claim
22 possesses an unobvious difference over the semiconductor chip of Tilly.
Appellants argue that Tilly does not teach the limitation of a “surface
of the substrate being exposed between the plurality of collars while ends of
the plurality of collar remain exposed.” (Br. 11.) However, similar to the
previous discussion of claim 1, under the broadest reasonable interpretation
consistent with the Specification, we agree with the Examiner that
“exposed” can be construed as the exposure of the bond pads 24 (i.e., the
claimed “contact pads”) to the conductive studs 40 (i.e., the claimed
“conductive structure.”) Likewise, Figure 5 of Tilly illustrates that the ends
of dielectric material 52 (i.e., the claimed “plurality of collars”) are
“exposed” to contacts 34. (FF 6.)
Therefore, Appellants have not shown that the Examiner erred in
finding that Tilly teaches the limitation of a “surface of the substrate being
24
Appeal 2009-3182
Application 10/328,558

exposed between the plurality of collars while ends of the plurality of collars
remain exposed,” as recited in claim 22.
Appellants have not shown that the Examiner erred in rejecting claims
1, 6, 12, 15-17, 19, 21, 22, 27, 33 and 36 under 35 U.S.C. § 102(e). Because
Appellants have not presented arguments regarding claims 2, 7-11, 14, 18,
23, 28-32, 34 and 35, we affirm the rejection of these claims under
35 U.S.C. § 102(e) for the same reasons as claims 1, 16 and 22 from which
they depend.

§ 103 Rejection - Tilly/Carper
Claims 3-5, 20 and 24-26
Appellants’ arguments (Br. 14-15) that the Examiner improperly
combined Tilly and Carper are not persuasive. Appellants’ arguments
regarding independent claims 1, 16 and 22, from which claims 3-5, 20 and
24-26 ultimately depend, are unconvincing for the reasons previously
discussed. Next, Appellants argue that “the teachings of Tilly and Carper
are totally unrelated.” (Br. 14.) In addition, Appellants argue that when
Tilly and Carper are considered in their entirety, “one of ordinary skill in the
art would have had no reason to expect that the asserted combination . . .
would have been successful.” (Br. 15.) We do not find these arguments
persuasive.
Tilly is related “to [the] bond pads of semiconductor chips.” (FF 3.)
Tilly further teaches that for conventional semiconductor chips, a “wire is
bonded [to] each of . . . the bond pads” and that “[e]ach of these bond wires
electrically connects the semiconductive chip with a circuit or component of
a substrate.” (FF 3.) Likewise, Carper is related to “[s]emiconductor
25
Appeal 2009-3182
Application 10/328,558

packages . . . formed by bonding a semiconductor chip to a metallic
leadframe and encapsulating in plastic.” (FF 7.) Thus, contrary to the
Appellants’ arguments that “the teachings of Tilly and Carper are totally
unrelated” (Br. 14), both references are related to bonding a semiconductor
chip to a substrate (FF 3, 7).
The Examiner found that the dielectric material 52 of Tilly is
composed of an epoxy resin. (Ans. 15; FF 5.) The Examiner also found that
the insulating film 24 of Carper can be formed of a photo-imageable
material (Ans. 15; FF 8), which has the advantage of requiring fewer process
steps compared to non-photo-imageable materials (Ans. 15-16; FF 8).
Combining Tilly with Carper is no more than the simple substitution of one
known element for another, with no unexpected results. See KSR, 550 U.S.
at 417. In other words, forming the dielectric material 52 of Tilly with the
known photo-imageable material as taught by Carper, rather than forming
the dielectric material 52 with the known epoxy resin material, is no more
than the simple substitution of one known element for another to yield a
predictable result.
Appellants argue that “one of ordinary skill in the art would have no
reason to expect that the polymeric film of Carper could, like the dielectric
coatings 52 of Tilly, be formed between assembled semiconductor device
components.” (Br. 15.) However, this argument is unconvincing because
independent claim 1 broadly recites “at least one collar at least partially
surrounding at least one contact pad” (emphasis added). Independent claims
16 and 22 recite similar limitations. We find that one of ordinary skill in the
art would have a reasonable expectation of success in substituting the photo-
imageable material of Carper on a chip 20 previously bonded to a substrate
26
Appeal 2009-3182
Application 10/328,558

32, because such photo-imageable material could be optically patterned and
developed on a cross-section of the chip 20 bonded to the substrate 32 to
form “at least one collar at least partially surrounding at least one contact
pad,” as recited in claim 1.
Appellants further argue that because “Tilly already include[s] contact
pads . . . there would be no reason for one of ordinary skill in the art to use
the mask processes of Carper to form contact pads on the semiconductor
chip 20 or the substrate 32 of Tilly.” (Br. 15.) However, this argument
lacks merit because the Examiner did not cite Carper for forming contact
pads.
Appellants have not presented any convincing arguments or evidence
that the Examiner erred in combining Tilly and Carper. Therefore,
Appellants have not shown that the Examiner erred in combining Tilly and
Carper.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 3-5, 20 and 24-26 under 35 U.S.C. § 103(a).

CONCLUSION
Based on the findings of facts and analysis above, we conclude that:
(1) Appellants have not shown that the Examiner erred in rejecting
claims 1, 2, 6-12, 14-19, 21-23 and 27-36 under 35 U.S.C. § 102(e).
(2) Appellants have shown that the Examiner erred in rejecting
claims 3-5, 20 and 24-26 under 35 U.S.C. § 103(a).

27
Appeal 2009-3182
Application 10/328,558

DECISION
The rejection of claims 1, 2, 6-12, 14-19, 21-23 and 27-36 under
35 U.S.C. § 102(e) is affirmed.
The rejection of claims 3-5, 20 and 24-26 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

sss

TRASKBRITT, P.C.
P.O. BOX 2550
SALT LAKE CITY, UT 84110
28