12172778 (P.T.A.B. Mar. 25, 2013)

Ex Parte Chiu et al

Patent Trial and Appeal BoardMar 25, 2013

12172778 (P.T.A.B. Mar. 25, 2013)

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. 12/172,778 07/14/2008 George Liang-Tai Chiu YOR920060318US2 14-02-01 5605 68397 7590 03/25/2013 THE LAW OFFICES OF ROBERT J. EICHELBURG HODAFEL BUILDING, SUITE 200 196 ACTON ROAD ANNAPOLIS, MD 21403 EXAMINER HOANG, QUOC DINH ART UNIT PAPER NUMBER 2892 MAIL DATE DELIVERY MODE 03/25/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEORGE LIANG-TAI CHIU and SUNG-KWON KANG ____________ Appeal 2010-010326 Application 12/172,778 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010326 Application 12/172,778 2 STATEMENT OF THE CASE Appellants are appealing claims 1-25. Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to a thermal interface material (TIM) with “reduced thermal resistance to improve cooling of electronic devices such as a semiconductor chip.” Specification 4. Illustrative Claim 1. A process comprising joining a first surface and a second surface where said first surface comprises an initially non-solderable surface which comprises; coating said first surface with a solder-adhesion layer to produce a solder-adhesion layer on said first surface; providing a TIM composition comprising solderable heat- conducting particles in a bondable resin matrix, at least some of said solderable heat-conducting particles comprising a solder surface; placing said TIM composition between said first surface and said second surface to extend between and be contiguous with both said second surface and said solder-adhesion layer on said first surface; heating said TIM composition sufficiently to; (a) solder at least some of said solderable heat-conducting particles to one another; Appeal 2010-010326 Application 12/172,778 3 (b) solder at least some of said solderable heat-conducting particles to said solder-adhesion layer on said first surface; and adhesively bonding said resin matrix to said first surface and said second surface. Rejection on Appeal Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shimizu (U.S. Patent Number 7,025,906 B2; issued April 11, 2006) and Dani (U.S. Patent Number 7,332,807 B2; issued February 19, 2008). Answer 3-6. Issue on Appeal Do Shimizu and Dani, either alone or in combination, disclose a process wherein first and second surfaces are joined in which the first surface is coated with a solder-adhesion layer? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief. However, we highlight and address specific findings and arguments for emphasis as follows. Appeal 2010-010326 Application 12/172,778 4 Appellants contend that the rejection is an “attempt to substitute the electrically conductive and thermally conductive solder-coated particles of Shimizu for the dielectric coated particles of Dani which have obstructed electrical conductivity, and reduced heat conductivity because of the dielectric coating.” Appeal Brief 8. Appellants further argue that, “Dani produces particles that are the diametric opposite not only of Shimizu, but also the present invention. The rejection has to take into account the entire teachings of the Dani reference, warts and all. The examiner cannot pick and choose only those teachings that bolster the rejection.” Id. Appellants’ arguments pertaining to the substitution of the particles between the compositions of Shimizu and Dani are neither persuasive nor pertinent to the combination of Shimizu and Dani in reference to rejection of claims 1 and 11 because Dani discloses a semiconductor die wherein backside metallurgy 124 is applied to assist the TIM layer in adhering to the die. Dani, column 2, lines 55-65. As the Examiner finds: The 103 rejection is to incorporate or to include the coating layer (124) of Dani into the Shimizu's process, not to substitute as argued by the appellant. Also, Dani, column 3, lines 17-24, clearly discloses the coating layer (124) is a metal (titanium, AgSn, CuSn, AgCu, AgCuSn,...), which is a good electrical conductive material, and does not obstruct electrical conductivity at all. Furthermore, the examiner respectfully submits that by adding the coating layer (124) of Dani to the method of Shimizu does not change the principle of operation of the primary reference or render the reference inoperable for its intended purpose, but rather it would have improved the device as discussed in the above rejection. See MPEP § 2143.01. Answer 7. Appeal 2010-010326 Application 12/172,778 5 Therefore we sustain the Examiner’s rejection of independent claims 1 and 11 for the reasons stated above. Neither independent claim 1 nor independent claim 11 specifies the composition of solderable heat-conducting particles within the TIM layer. Appellants did not argue that the combination of Shimizu and Dani failed to disclose the claimed composition of the particles and therefore we will sustain the Examiner’s rejection of dependent claims 1-10 and 12-25. See Appeal Brief 4-5. See also Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (“Precedential”) (“[T]he Board will generally not reach the merits of any issues not contested by an appellant.”).1 DECISION The obviousness rejection of claims 1-25 is affirmed. 1 Only those arguments actually made by the Appellants have been considered in this decision. Arguments which the Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008). “It is not the function of [the U.S. Court of Appeals for the Federal Circuit] to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). “Similarly, it is not the function of this Board to examine claims in greater detail than argued by an appellant, looking for distinctions over the prior art.” Ex Parte Shen, No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI 2008). Appeal 2010-010326 Application 12/172,778 6 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). See 37 C.F.R. § 41.50(f). AFFIRMED pgc