Ex Parte ARGENTODownload PDFPatent Trial and Appeal BoardNov 27, 201814068451 (P.T.A.B. Nov. 27, 2018) Copy Citation 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 2 Appeal 2018-000036 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. 3 Appeal 2018-000036 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 4 Appeal 2018-000036 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. 5 Appeal 2018-000036 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. 6 Appeal 2018-000036 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 7 Copy with citationCopy as parenthetical citation