Ex Parte Chen et al

Patent Trial and Appeal Board

Sep 22, 2017

12774731 (P.T.A.B. Sep. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/774,731 05/06/2010 Kuan-Neng Chen 06720.0375 8624
22852 7590 09/26/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUAN-NENG CHEN, WEI-CHUNG LO, and CHENG-TA KO1
Appeal 2017-002460
Application 12/774,731
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision to finally reject claims 1,
4—6, 31—33, 35—40, and 42-46, which constitute all the claims pending in
this application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify Industrial Technology Research Institute as the real
party in interest. App. Br. 1.
2 In our Decision, we refer to the Specification filed May 6, 2010 (“Spec.”);
Final Office Action dated February 29, 2016 (“Final Act.”); Appeal Brief
dated July 28, 2016 (“App. Br.”); Examiner’s Answer to the Appeal Brief
dated September 28, 2016 (“Ans.”); and Reply Brief dated November 28,
2016 (“Reply Br.”).
Appeal 2017-002460
Application 12/774,731
The Claimed Invention
Appellants’ disclosure relates to a bonding structure comprising a first
substrate having a first bonding element and a second substrate having a
second bonding element, wherein at least one of the first bonding element
and the second bonding element is formed with an alloy and a bonding
process is performed to bond the first bonding element with the second
bonding element, wherein a diffusion liner is generated at the exposed, non-
bonded surface of the bonding structure. Abstract; Spec. 11.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
11) (key disputed claim language italicized and bolded):
1. A bonding structure, comprising:
a copper stud;
a copper-based alloy having a flat top surface and bonded to
a bottom surface of the copper stud, wherein the flat top surface
has a surface area larger than a surface area of the bottom surface
of the stud, and the flat top surface includes a bonding area
between the copper stud and the copper-based alloy, the bonding
area occupying a central portion of the flat top surface, and a
nonbonding area surrounding the bonding area, wherein the
copper-based alloy includes a principle component being copper
and a secondary component including an element selected from
a group consisting of titanium, magnesium, and aluminum; and
a self-forming diffusion liner configured on the top surface
of the nonbonding area of the copper-based alloy, wherein the
self-forming diffusion liner includes the principle component
and the secondary component included in the copper-based
alloy, and a weight percentage of the secondary component in
the self-forming diffusion liner is higher than a weight
percentage of the secondary component in the copper-based
alloy.
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Appeal 2017-002460
Application 12/774,731
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Duerrschnabel et al.
(hereinafter “Duerrschnabel”) US 4,678,637
Pan US 4,810,332
Shibuya et al.,
(hereinafter “Shibuya”) US 2002/0070400 Al
Lin et al.,
(hereinafter “Lin”) US 2004/0166659 Al
July 7, 1987
Mar. 7, 1989
June 13, 2002
Aug. 26, 2004
The Rejection
On appeal, the Examiner maintains the following rejection: claims 1,
4—6, 31—33, 35—40, and 42-46 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pan in view of Duerrschnabel as evidenced by Lin
and Shibuya. Ans. 2; Pinal Act. 2.
OPINION
The Examiner determines that the combination of Pan and
Duerrschnabel, as evidenced by Lin and Shibuya, suggests a structure
satisfying all of the limitations of claim 1, thus rendering claim 1 obvious.
Ans. 2-4. Regarding the “self-forming diffusion liner” limitation of claim 1,
the Examiner finds that Pan’s electroplated protective overcoat 34 forms a
liner on the top surface of the non-bonded area of the copper pillars 32 and
copper conductors 28. Id. at 2, 3 (citing Pan, col. 3,11. 27—34, col. 4,11. 1—
4).
Regarding the limitation “a weight percentage of the secondary
component in the self-forming diffusion liner is higher than a weight
percentage of the secondary component in the copper-based alloy,” the
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Application 12/774,731
Examiner determines that although neither Pan nor Duerrschnabel explicitly
discloses the limitation, a prior art structure satisfying the limitation would
have been obvious because “one of ordinary skill in the art would expect
substantially identical materials treated in a substantially identical manner to
have substantially identical structures.” Ans. 3.
In particular, the Examiner finds that because the prior art “titanium
coated copper-titanium alloys” based on the combination of Pan and
Duerrschnabel are heat treated under substantially identical conditions as the
claimed copper alloy material, “one of ordinary skill in the art would have
expected the prior art structure to have a composition substantially identical
to that of applicants, including proportions which satisfy the presently
claimed requirements.” Ans. 4.
Appellants argue that the Examiner’s rejection should be reversed
because a person of ordinary skill in the art would not have found it obvious
to combine Pan and Duerrschnabel to form a structure “wherein the self-
forming diffusion liner includes the principle component and the secondary
component included in the copper-based alloy, and a weight percentage of
the secondary component in the self-forming diffusion liner is higher than a
weight percentage of the secondary component in the copper-based alloy,”
as recited in claim 1. App. Br. 8.
Appellants further argue that there is no teaching or suggestion in the
cited references that “the heat treatment of the copper-chromium-titanium-
silicon alloy material coated with a titanium material would result in the
composition of the materials” recited in the claims. Id. at 8.
Appellants’ argument is persuasive because the Examiner has not
provided adequate technical reasoning to establish or identified by a
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Application 12/774,731
preponderance of the evidence that one of ordinary skill in the art would
have found it obvious to combine the teachings of Pan and Duerrschnabel
and would have expected the prior art structure to have a self-forming
diffusion liner composition substantially identical to the claimed invention.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the
examiner bears the initial burden of establishing a prima facie case of
obviousness).
The Examiner does not adequately discuss or identify sufficient
evidence in the record to establish that the prior art materials and structure
are substantially identical to the claimed self-forming diffusion liner.
As Appellants correctly point out (App. Br. 7—8; Reply Br. 5—6), the
claimed bonding structure comprises a first bonding element 212 formed of
a copper-based alloy and a second bonding element 222 formed of copper
bonded together and, as a result of the bonding process, a self-forming
diffusion liner layer 230 is generated at the exposed, non-bonding surface of
the first bonding element 212. Spec. Tflf 32, 33, 35, Fig. 2A, 2B. Notably, in
the claimed structure, the non-bonding surface of the first bonding element
212 is not coated with any overcoat material before the bonding/thermal
process.
In contrast, in the Examiner’s proposed prior art structure (Ans. 2, 3),
a titanium material is applied (electroplated) as an overcoat layer to the
copper-chromium-titanium-silicon alloy material before the heat treatment.
As a result, in the prior art structure, a copper-chromium-titanium-silicon
alloy material coated with an electroplated titanium material—which differs
from the composition and structure of the non-bonding surface recited in the
claims—would be subjected to the heat treatment.
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Appeal 2017-002460
Application 12/774,731
The Examiner also does not identify sufficient evidence or provide an
adequate technical explanation explaining why one of ordinary skill in the
art would have expected the heat treatment of a copper-chromium-titanium-
silicon alloy material coated with a titanium material to result in a structure
having a composition substantially identical to the claimed structure and in
particular, that the resulting “diffusion liner” would even contain a copper-
chromium-titanium-silicon alloy material component (the principle
component) as required in the self-forming diffusion liner recited in claim 1.
The fact that the prior art discloses curing of a polyimide material for
1 hour at 400°C (Lin 174) and for 2 hours at 320°C (Shibuya, 1142),
respectively, without more, does not persuade us that one of ordinary skill
would have had expected the composition of the prior art to be substantially
identical to the composition of the claimed self-forming diffusion liner. See
KSRInt’l 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 Examiner’s assertion that “one of ordinary skill in the art would
have expected the prior art structure to have a composition substantially
identical to that of applicants, including proportions which satisfy the
presently claimed requirements” (Ans. 8) is largely conclusory and, without
more, insufficient to sustain the Examiner’s rejection. Kahn, 441 F.3d at
988 (holding “rejections on obviousness grounds cannot be sustained by
mere conclusory statements”).
We, therefore, cannot sustain the Examiner’s determination that the
combination of Pan and Duerrschnabel, as evidenced by Lin and Shibuya
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suggests a structure satisfying all of the limitations of claim 1 and that the
combination would have rendered claim 1 obvious.
Because claims 4—6 each depends from claim 1 and claims 31—33, 35—
40, and 42 46 include the same “self-forming diffusing liner” limitation as
claim 1, we also cannot sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 4—6,
31—33, 35—40, and 42-46 under 35 U.S.C. § 103(a) as being obvious over
the combination of Pan and Duerrschnabel, as evidenced by Lin and
Shibuya.
DECISION
The Examiner’s rejections of claims 1, 4—6, 31—33, 35—40, and 42-46
are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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