Ex Parte Choi et al

Patent Trial and Appeal Board

Mar 28, 2014

12491742 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/491,742 06/25/2009 Soo-Min Choi 102351-0138 5963
38706 7590 03/31/2014
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
BOYLE, ABBIGALE A
ART UNIT PAPER NUMBER
2891
MAIL DATE DELIVERY MODE
03/31/2014 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 SOO-MIN CHOI, HYEONG-NO KIM, JAE-SUN AN,
YOUNG-GUE LEE and SANG-JIN CHA
______________

Appeal 2011-012581
Application 12/491,742
Technology Center 2800
_______________

Before CHARLES F. WARREN, TERRY J. OWENS and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1-7, 12 and 19-23
under 35 U.S.C. § 103(a) over Akaike (US 2006/0148317 A1) and Wu
(US 6,602,737 B2). Br. 3; Ans. 4. We have jurisdiction. 35 U.S.C. § 6(b).
We affirm the decision of the Primary Examiner.
Claim 1, with reference to Specification Figure 5A, illustrates
Appellants’ invention of a chip package having a conductive film to shield
the chip package from electromagnetic interference (EMI), and is
representative of the claims on appeal:
1. A chip package (500), comprising:
a carrier (510), including a carrying surface (510a), a back surface
opposite to the carrying surface, and a first side surface surrounding and
Appeal 2011-012581
Application 12/491,742
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connected between the carrying surface and the back surface, the carrier
(510) further including a plurality of common contacts (512) in the periphery
of the carrying surface (510a);
a chip (520), disposed on the carrying surface (510a) and electrically
connected to the carrier (510);
a plurality of conductive elements (532), disposed on and connected
to the common contacts (512) respectively,
an encapsulation (540), covering the carrying surface (510a) and
encapsulating the chip (520) and the conductive elements (532), while a top
portion of each of the conductive elements (532) is exposed; and
a conductive film (550), provided with a second side surface and
directly attached to the top portions of the conductive elements (532),
wherein the first side surface of the carrier (510) is coplanar with the second
side surface of the conductive film (550).
Br. 9 (Claims App’x) (numerals supplied). Spec. ¶¶ 0001, 0003, 0052-0058.
We note here that claim 19 differs from claim 1 solely in specifying
conductive “layer” 550. Br. 10 (Claims App’x).
We decide this appeal based on claims 1 and 19 as argued by
Appellants. App. Br. 3-8.
OPINION
We cannot agree with Appellants that the Examiner erred in
determining that the combination of Akaike and Wu would have led one of
ordinary skill in the art to modify Akaike’s semiconductor device 100, in
which metal layer or foil shield member 107, that protects against
electromagnetic waves, is electrically connected to solder ball ground
terminals 76 with solder paste 108, by directly attaching shield member 107
to solder ball ground terminals 76 without using solder paste 108 as shown
by Wu’s attachment of metal heat sink 23 directly to solder column 24, thus
arriving at a chip package in which the conductive, that is shielding, film is
Appeal 2011-012581
Application 12/491,742
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directly attached to conductive elements, such as solder balls, as specified in
claim 1. Akaike abstract, ¶¶ 0004, 0060-0068, Fig. 9; Wu col.2 ll.16-21,
col.3 ll.16-23, col.4 ll.5-11, Fig. 1J. Ans. 4-5, 9-12; App. Br. 3-8; Reply Br.
2-4.
The Examiner contends that one of ordinary skill in the art would
have recognized that Akaike’s metal shield member 107 is attached to
conductive solder ball ground terminals 76 by solder paste 108, and thus
would have been led to further directly attach shield member 107 to
conductive solder ball ground terminals 76, and in this respect, would have
looked to a reference such as Wu which shows metal heat sink 23 directly
attached to solder column 24 to directly attach metal shield member 107 are
attached to conductive solder ball ground terminals 76. Ans. 5, 10.
On this record, we agree with the Examiner’s position because one of
ordinary skill in the art would have reasonably expected that a chip package
in which the conductive metal shield is directly attached to a conductive
solder element would have the identical or substantially identical properties
as Akaike’s chip package in which the conductive metal shield is attached to
a conductive solder element by a conductive solder paste. Indeed, we are
not convinced by Appellants’ arguments that one of ordinary skill in the art
would not have combined Akaike’s chip package and Wu’s heat dissipation
structures that include metal heat sink 23 directly attached to solder column
24 because Akaike and Wu constitute non-analogous art areas. App. Br.
3-5; Reply Br. 2. This is because, as the Examiner points out, the problem
of directly attaching Akaike’s conductive metal shield to the conductive
solder element would have commended Wu’s method of directly attaching a
metal layer to a solder column to the attention of one of ordinary skill in this
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Application 12/491,742
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art in order to modify Akaike’s chip package even though Wu is in an
unrelated area of endeavor. See, e.g., In re Clay, 966 F.2d 656, 659-60 (Fed.
Cir. 1992) (“A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.”). We are further
unconvinced by Appellants’ arguments that the combined features of Akaike
and Wu would not result in the claimed chip package. App. Br. 6-8; Reply
Br. 3-4. Indeed, as the Examiner points out, one of ordinary skill in the art
would have considered Wu’s teachings of attaching a metal layer directly to
a solder column and not for the heat dissipation structures disclosed by Wu.
Ans. 11 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Akaike and Wu with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-7, 12 and 19-23 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
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).

AFFIRMED

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