Ex Parte Castro et al

Patent Trial and Appeal Board

Aug 6, 2018

14838729 (P.T.A.B. Aug. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/838,729 08/28/2015
23494 7590 08/08/2018
TEXAS INSTRUMENTS IN CORPORA TED
PO BOX 655474, MIS 3999
DALLAS, TX 75265
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Abram M. Castro
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.
TI-67656A 1274
EXAMINER
ZHU, SHENG-BAI
ART UNIT PAPER NUMBER
2892
NOTIFICATION DATE DELIVERY MODE
08/08/2018 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABRAM M. CASTRO and MARK A. GERBER
Appeal2017-010196
Application 14/838,729
Technology Center 2800
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 17-34. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, "Texas Instruments Incorporated," which,
according to the Brief, is the real party in interest ( Appeal Brief filed March
10, 2017 (hereinafter"Br.") 3).
2 Br. 9-39; Final Office Action entered September 14, 2016 (hereinafter
"Final Act.") 2-13; Examiner's Answer entered May 11, 2017 (hereinafter
"Ans.") 3-15.
Appeal2017-010196
Application 14/838,729
I. BACKGROUND
The subject matter on appeal relates to semiconductor devices "with
non-circular pillar-shaped bumps designed for fine pitch interconnect and
high stress tolerance" (Specification filed August 28, 2015 (hereinafter
"Spec.") ,r 2). Figure 1 (annotated) is reproduced from the Drawings filed
August 28, 2015 as follows:
1
OO s,,m1c0r.ductor device
~ ,/
s
FIG. l
.....
',-_
101 insu1aTh1g
substrate
Figure 1 above is described as a schematic perspective view of an exemplary
embodiment of the invention comprising a semiconductor chip 102 (shown
to be transparent) with staggered contact pads 121 connected by pillars
having a height 140 with pillar metal cores 141 having oblong cross-sections
150 and solder bodies 142 to straight traces 110 having first lengths 111 and
first widths 112 on an insulating substrate 101 (id. ,r,r 9, 18-22). Each
oblong cross-section 150 is shown as including a second width 151 and a
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Application 14/838,729
second length 152, wherein the second length 152 is greater than the second
width 151 (id. ,r 22). The second width 151 is described as preferably being
about equal in size to trace (first) width 112 (id. ,r 25).
Representative claim 17 is reproduced from the Claims Appendix to
the Appeal Brief (Br. 41 ), with key limitations emphasized and drawing
reference numerals added in brackets, as follows:
1 7. A semiconductor device [100] comprising:
a substrate [101] having a first surface [101a] including
conductive traces [110], the traces [110] having a first length
[111] and a first width [112], the first width [112] being uniform
along the first length [111 ], and further a pitch [114] to respective
adjacent traces [110];
a semiconductor chip [102] having a second surface
[102a] including contact pads [121 ], the second surface [102a]
facing the first surface [101a] spaced apart by a gap [130];
a conductive pillar of a height [140] on each contact pad
[121 ], the pillar including a core [141] and a solder body [142]
connecting the core [141] to the respective trace [11 OJ across the
gap [130]; and
the pillar core [141] having a non-circular cross section
[150] having a second width [151] and a second length [152]
greater than the second width [151] and greater than the first
width [112].
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections as follows:
A. Claim 1 7 under the judicially-created doctrine of obviousness-
type double patenting as unpatentable over claim 1 of United
States Patent 9,129,955 B2 (hereinafter "'955 Patent") 3 in view
3 The '955 Patent issued September 8, 2015 based on Application
12/503,553 filed July 15, 2009, from which the current application claims
benefit of an earlier filing date as a continuation.
3
Appeal2017-010196
Application 14/838,729
of Shizuki et al. (hereinafter "Shizuki")4 and Kimura et al.
(hereinafter "Kimura") 5;
B. Claims 17-19, 22, 23, and 26-31 under 35 U.S.C. § I03(a)
(pre-AIA) as unpatentable over Nakamura et al. (hereinafter
"Nakamura") 6 and Shizuki;
C. Claims 20, 21, 24, and 25 under 35 U.S.C. § I03(a) as
unpatentable over Nakamura, Shizuki, and Kimura;
D. Claims 32 and 34 under 35 U.S.C. § I03(a) as unpatentable
over Nakamura, Shizuki, and Sunohara et al. (hereinafter
"Sunohara"); 7
E. Claim 32 under 35 U.S.C. § I03(a) as unpatentable over
Nakamura, Shizuki, and Yang; 8 and
F. Claim 33 under 35 U.S.C. § I03(a) as unpatentable over
Nakamura, Shizuki, and Yoshimura. 9
(Ans. 3-15; Final Act. 2-13.)
III. DISCUSSION
Rejection A. The Examiner finds that claim 17 on appeal is
"substantially identical" to claim 1 of the '955 Patent (Final Act. 2).
Specifically, the Examiner finds that claim 1 of the '955 Patent recites "a
4 US 5,914,536, issued June 22, 1999.
5 US 2007 /0278670 Al, published December 6, 2007. This reference was
not listed in the statement of the rejection but was relied on in the reasons in
support of the rejection (Final Act. 2-3).
6 US 2005/0263885 Al, published December 1, 2005.
7 US 2009/0183911 Al, published July 23, 2009.
8 US 2008/0265405 Al, published October 30, 2008.
9 US 6,527,963 Bl, issued March 4, 2003.
4
Appeal2017-010196
Application 14/838,729
non-solder metal core" and "an oblong cross section," whereas claim 17 on
appeal recites "a core" and "a non-circular cross-section," respectively (id.).
The Examiner further relies on Shizuki and Kimura as disclosing similar
pillar cores with non-circular cross-sections and concludes that "[ o ]ne of
ordinary skill in the art would have been motivated to modify the device of
'955 as taught by Shizuki because the particular claimed configuration is one
of numerous configurations a person of ordinary skill in the art would [have
found] obvious for the purpose of a particular application" (id. at 2-3).
The Appellant contends that Shizuki does not teach a pillar core
having a second length greater than the first width as specified in claim 1 7
(Br. 9). The Appellant argues that, rather, Shizuki teaches away from the
claimed invention by teaching that the pillar core 152, as shown in Figures
1 A, 20B, and 21, has a length and width smaller than the first width of
electrode 12 (id.).
The Appellant's arguments fail to reveal any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
As the Examiner points out (Ans. 3), the limitations at issue as recited
in claim 17 are disclosed in claim 1 of the '955 Patent ("the pillar core
having an oblong cross section ... having a second width and a second
length greater than the second width and greater than the first width").
Although the Examiner further relies on Shizuki and Kimura, every
limitation recited in claim 17 is described in claim 1 of the '955 Patent.
Therefore, claim 17 of the subject application, which was filed after the
application that matured into the '955 Patent, is patentably indistinct from
claim 1 of the '955 Patent. In re Basel! Poliolefine Italia SP.A., 547 F.3d
1371, 1376 (Fed. Cir. 2008) (one-way test for obviousness-type double
5
Appeal2017-010196
Application 14/838,729
patenting applies except in unusual circumstances where the PTO is solely
responsible for the delay in causing a later-filed application to issue before
an earlier-filed application).
Moreover, Shizuki and Kimura were cited for the non-circular cross-
section limitation (Final Act. 2-3), which is disclosed in claim 1 of the '955
Patent. We find nothing in Shizuki's disclosures, as cited by the Appellant
(Shizuki col. 11, 11. 57---64; Figs. IA, 20B, and 21 ), that would have
indicated to a person having ordinary skill in the art that the second length
for an oblong (i.e., non-circular) cross-section as specified in claim 1 of the
'955 Patent cannot be greater than the first width. Indeed, claim 1 of the
'955 Patent directly contradicts such an argument by disclosing the
limitations at issue. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004) ("Iron Grip offers no evidence that the
prior art taught away from the invention besides [a] broad conclusory
statement .... ").
For these reasons, we uphold the Examiner's rejection on this ground.
Rejections B-F. Although the Appellant submits arguments under
various headings and sub-headings, the arguments are essentially the same
for all five rejections and for all claims, with only cursory or skeletal
arguments that some of the additional references cited for Rejections C
through F teach away from the claimed invention (Br. 10-40). Therefore,
we focus our discussion primarily on claim 1 7 and address additional claims,
if any, only to the extent that they have been argued separately pursuant to
the requirements set forth in 37 C.F.R. § 4I.37(c)(l)(iv). Cf In re Lovin,
652 F.3d 1349, 1356-57 (Fed. Cir. 2011).
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Appeal2017-010196
Application 14/838,729
The Examiner finds that Nakamura describes a semiconductor device
including every limitation recited in claim 17 except for "a solder body
connecting the core to the respective trace across the gap" (Final Act. 3--4).
To resolve the difference between Nakamura's device and the claimed
device, the Examiner relies on Shizuki, which teaches a similar
semiconductor device in which a solder body is used to connect a pillar core
having a non-circular cross-section to a respective trace in a reliable manner
(Ans. 6; Final Act. 4). The Examiner concludes from these findings that a
person having ordinary skill in the art would have combined Nakamura and
Shizuki in the manner claimed by the Inventors (Final Act. 4--5).
The Appellant contends that Shizuki teaches away from the claimed
invention because Shizuki teaches a length for metal core 152
( corresponding to the "second length" recited in claim 1 7) that is equal to a
width for wiring conductor 14 ( corresponding to the "first width" recited in
claim 1 7) but not "greater than the first width" as required by the claim (Br.
10-11) (referring to, e.g., Shizuki col. 11, 11. 62---63 and Fig. lB). The
Appellant argues that Nakamura also teaches away because it teaches metal
bumps 3 are smaller than the wirings 6, 7, and 14 (Br. 11) (referring to, e.g.,
Fig. 2C, 4B, 4C and ,r,r 49, 52, 62---63). Furthermore, the Appellant argues
that Nakamura teaches away from the claimed invention because it does not
have a pillar core and a solder body as required by claim 17 (Br. 11 ).
According to the Appellant, the "stark differences" between Nakamura and
Shizuki would have precluded their combination by a person having
ordinary skill in the art (Br. 12).
We find no merit in the Appellant's arguments. As an initial matter,
"[t]he prior art's mere disclosure of more than one alternative does not
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Appeal2017-010196
Application 14/838,729
constitute a teaching away from any of these alternatives [where] such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed" by the Inventors. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Applying the correct standard for determining whether the prior art
teaches away, we find no reversible error in the Examiner's rejection of
claim 17. Specifically, Nakamura's Figure 2C (annotated) is reproduced
below:
FIG. 2C
2
e!ectrode pad
'