Ex Parte ARGENTO

Patent Trial and Appeal Board

Nov 27, 2018

14068451 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/068,451 10/31/2013 CHRISTOPHER W. ARGENTO
23125 7590 11/29/2018
NXP USA, Inc.
LAW DEPARTMENT
6501 William Cannon Drive West TX30/0E62
AUSTIN, TX 78735
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.
MT11629TK 9865
EXAMINER
HAN, JONATHAN
ART UNIT PAPER NUMBER
2818
NOTIFICATION DATE DELIVERY MODE
11/29/2018 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER W. ARGENTO
Appeal2018-000036
Application 14/068,451
Technology Center 2800
Before TERRY J. OWENS, DONNA M. PRAISS, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1--4 and 6-10. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 In this decision we reference the Specification filed Oct. 31, 2013
("Spec."), the Final Office Action dated July 29, 2016 ("Final Act."), the
Appeal Brief filed Mar. 28, 2017 ("Appeal Br."), the Examiner's Answer
dated July 28, 2017 ("Ans."), and the Reply Brief filed Sept. 28, 2017
("Reply Br.").
2 NXP USA, Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal 2018-000036
Application 14/068,451
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal and is copied
below from the Claims Appendix to the Appeal Brief ( disputed limitations
are italicized):
1. A method for packaging an electronic device assembly,
the method comprising:
placing a first electronic device in a first area of a package
substrate for the electronic device assembly;
affixing a thermally conductive structure to a major surface of
the first electronic device,
wherein
the thermally conductive structure comprises thermally
conductive polymers,
the thermally conductive polymers are dielectric
materials, and
the thermally conductive structure is affixed at a first end
to the first electronic device and is free at a second end of
the thermally conductive structure;
forming an encapsulant over and around sides of the first
electronic device and over and around sides of the thermally
conductive structure;
exposing a portion of the thermally conductive polymers at the
second end of the thermally conductive structure at a first major
surface of the encapsulated electronic device assembly; and
affixing a heat sink to the first major surface of the
encapsulated electronic device assembly, wherein
the heat sink is configured to dissipate heat transported
from the first electronic device through the thermally
conductive structure, and
said affixing is performed by applying a thermally
conductive adhesive directly to the second end of the
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Application 14/068,451
thermally conductive structure and the heat sink coupled
directly to the thermally conductive adhesive.
Appeal Br. 13 (Claims Appendix).
THE REJECTIONS
1. Claims 1--4 and 6-8 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Gowda3 in view of Jewram4 and van de Ven. 5
2. Claims 9 and 10 stands rejected under 35 U.S.C. § I03(a) as
being unpatentable over Gowda, Jewram, and van de Ven in further view of
additional references.
ANALYSIS
We need to address only claim 1, the sole independent claim in this
Appeal, because each of the rejections is based on the same finding that it
would have been obvious to a skilled artisan (1) to combine the thermally
conductive polymers of Jewram in Gowda's method for packaging an
electronic device assembly, (2) to modify the polymer/metal thermal
conductive structures of Jewram to be exclusively a dielectric material, and
(3) to combine van de Yen's teaching of direct contact between a heat sink
and its thermally conductive structures. Final Act. 3-7; Ans. 3-7.
Appellant contends that the Examiner erred in combining Gowda with
Jewram's disclosure of thermal interface member 10 as an example of a
structure containing thermally conductive polymers. Appeal Br. 10.
Appellant acknowledges that "Jewram does state that some or all of
Jewram's bulk layer 12 is a conformable or phase changing silicon-based
3 US 2014/0264800 Al, pub. Sept. 18, 2014.
4 US 2009/0166854 Al, pub. July 2, 2009.
5 US 2012/0201024 Al, pub. Aug. 9, 2012.
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Application 14/068,451
polymer, such as 'silicone waxes, silicone greases, and silicone gels."' Id.
(quoting Jewram ,r 29). According to Appellant, however, Jewram's
objective of interface member 10 remaining "non-tacky" during subsequent
processing is achieved by providing a metallic or metal "surface layer 14"
on "bulk layer 12." Id. (citing Jewram ,r,r 7, 34--38). Appellant contends
that Jewram's metal surface layer 14 is precluded by claim 1; therefore, the
combination of references does not disclose all of the limitations of claim 1.
Id. Appellant also contends that without the metallic surface layer disclosed
by Jewram, it would render a device incorporating the polymers of Jewram
unusable for Jewram's stated purpose, as the objective of non-tackiness
sought by J ewram would not be met. Id. at 11. Appellant asserts that
van de Ven does not cure the deficiencies of Jewram. Id. Appellant also
asserts that van de Ven does not disclose the claimed thermally conductive
structure, therefore, it fails to disclose coupling of a heat sink to a thermally
conductive structure as claimed. Id.
The Examiner responds that Gowda discloses that its thermally
conductive structure is used for heatspreading and is electrically isolated,
and that a skilled artisan "would appreciate that the polymer based thermally
conductive structures of Jewram would further this electrical isolation,
preventing possible short circuiting risks associated with an exposed heat
sink." Ans. 8 ( citing Gowda ,r,r 33, 42; Jewram ,r,r 29--30). The Examiner
finds that "surface layer [14] of Jewram is equivalent to layer [68] of Gowda
and can function as the adhesive." Id. The Examiner cites paragraph 38 of
Gowda as disclosing that Gowda's thermal interface layer may be a thermal
adhesive. Id. (citing Gowda ,r 38). The Examiner also finds that because the
Specification is silent as to the composition of the adhesive layer, "the
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Application 14/068,451
adhesive layer can be any material that does not negatively affect the
thermal conductivity between the thermally conductive structures and the
heat sink (as required by claim 1)." Id. at 9. For this reason, the Examiner
determines that Jewram's surface layer 14 can remain non-tacky at elevated
temperatures "in a functionally equivalent manner as the thermal interface
layer [68] of Gowda (see Jewram i"f[0051 ])." Id.
Regarding van de Ven, the Examiner finds that the reference "teaches
that thermally conductive communication can occur directly between
thermally conductive structures, regardless of materials." Id. ( citing
van de Ven ,r,r 57-65).
We are persuaded by Appellant that the Examiner has not set forth a
prima facie case of obviousness as to claim 1. In rejecting claims under
35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966) (noting that 35 U.S.C. § 103 leads to three basic factual inquiries:
(1) the scope and content of the prior art; (2) the differences between the
prior art and the claims at issue; and (3) the level of ordinary skill in the art).
Furthermore, the Examiner's obviousness rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
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Application 14/068,451
KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We agree with Appellant that the Examiner's combination of the
references constitutes reversible error. The Examiner's stated reason (Ans.
8) for combining Jewram with Gowda is based on the thermally conductive
structures of both Jewram and Gowda being electrically isolated. Because
the thermally conductive structures of Jewram and Gowda are both
electrically isolated, the Examiner's rationale lacks an apparent reason or
rational underpinning for modifying the method of Gowda. The Examiner
does not direct us to any evidence in this record to support the substitution of
material in Gowda's thermally conductive structure with the polymer used in
Jewram's thermally conductive structure. That is, there is no evidence in the
cited record that greater electrical isolation would have been beneficial or
could have been achieved by the proposed modification.
Nor does the Examiner adequately explain why one skilled in the art
would have combined the teachings of Gowda and Jewram to substitute the
adhesive of Gowda (Gowda's layer 68) for Jewram's metal surface layer 14.
The Examiner provides no support for the finding (Ans. 8) that Jewram's
metal surface layer 14 is equivalent to and can function as Gowda's adhesive
layer 68. The fact that the composition of the claimed thermally conductive
adhesive is not disclosed in the Specification (Ans. 8) is not a sufficient
basis for finding any material equivalent to the claimed thermally conductive
adhesive. Claim 1 requires that the thermally conductive adhesive perform
the function of affixing a heat sink. The Examiner does not identify any
support in this record for Jewram's metal surface layer 14 being capable of
functioning in this manner.
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Application 14/068,451
Appellant, therefore, has persuasively argued the Examiner's
determination that it would have been obvious to modify Gowda with the
thermally conductive structure of Jewram is not supported by the record.
Because we determine the facts and reasons relied on by the Examiner are
insufficient to support a prima facie case of obviousness, we reverse the
rejections of claims 1--4 and 6-10 under 35 U.S.C. § 103(a). We need not
separately address the Examiner's additional rejection of dependent claims 9
and 10 because none of the additional references the Examiner cited cures
the deficiencies of the combination of Gowda, J ewram, and van de Ven.
DECISION
Each rejection is reversed.
ORDER
REVERSED
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