Ex Parte Chow et al

Board of Patent Appeals and Interferences

Apr 30, 2010

11306354 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SENG GUAN CHOW, IL KWON SHIM,
MING YING, and BYUNG HOON AHN
_____________

Appeal 2009-001792
Application 11/306,354
Technology Center 2800
____________

Decided: April 30, 2010
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-001792
Application 11/306,354

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Figure 2A is reproduced below:

Figure 2A depicts a passive device 212 extending between lead
fingers 214 and 216.
Figure 11A is also reproduced below:
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Figure 11A depicts reservoirs 1106 and 1108 at the two corners
of the lead finger groove 1105.
Appellants’ claimed invention is directed to a system for an integrated
circuit package 200 including a leadframe 202 having lead fingers 214 and
216 (Fig. 2A). Each of the lead fingers (214, 216) has a respective groove
(215, 217) for deposition of a conductive bonding agent (Fig. 2A). A
passive device 212 is held in the groove by the conductive bonding agent
(Fig. 2A). Furthermore, reservoirs (i.e., 1106, 1108 in Fig. 11A) are at the
two corners of each of the lead finger grooves (i.e., 1105 in Fig. 11A). See
generally Spec. ¶¶ [10], [86]-[87], [160] and Figs. 2A and 11A.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An integrated circuit package, comprising:
a leadframe includes a lead finger having a groove with a connected
reservoir provided therein;
a conductive bonding agent in the groove and the connected reservoir;
and an electronic device in the groove to be held by the conductive
bonding agent.

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Application 11/306,354

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Honda US 5,399,905 Mar. 21, 1995

Jairazbhoy US 6,316,736 B1 Nov. 13, 2001

Liu US 6,486,535 B2 Nov. 26, 2002

Leal US 2004/0207077 A1 Oct. 21, 2004

Ramakrishna US 2004/0262718 A1 Dec. 30, 2004

The following rejections are before us for review:
1. The Examiner rejected claims 1-5 under 35 U.S.C. § 103(a) as
being unpatentable over Honda in view of Jairazbhoy.
2. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Honda in view of Jairazbhoy and further in view of
Ramakrishna.
3. The Examiner rejected claims 7, 8, 10, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Honda in view of Liu and further in
view of Jairazbhoy.
4. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Honda in view of Liu and further in view of Jairazbhoy
and further in view of Leal.
5. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Honda in view of Liu and further in view of Jairazbhoy
and further in view Ramakrishna.

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ISSUE
The pivotal issue is whether the combination of Honda in view of
Jairazbhoy teaches the limitation of “a lead finger having a groove with a
connected reservoir” as recited in representative claim 1.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Appellants’ Specification proposes that the system sets out to find
solutions for problems such as bridging (i.e., short-circuit) and
drawbridging/tombstoning (i.e., open circuit) (Spec. 2).1
2. Honda (e.g. Fig. 1) teaches an integrated circuit package having a
leadframe 1 with a lead finger 2 and a groove (Fig 5, element 19) with
a conductive bonding agent (col. 2, ll. 52-55) and an electronic device
15 in the groove to be held by the conductive bonding agent.
3. Jairazbhoy (Fig. 4) teaches an integrated circuit package having a
groove 18 with a connected reservoir 20 to prevent solder migration
during reflow (col. 2, ll. 1-4).
4. Jairazbhoy teaches that reservoirs resolve problems of solder
movement (bridging or short circuit; col. 1, ll. 52-55) and problems of
tombstoning (i.e., open circuit) (col. 1, l. 55-col. 2, l. 4) by providing a

1 We note that the divisional application 10/773,716, now US patent no.
7,005,325, explicitly recites: “This system eliminates problems that occur
during fabrication, such as misalignment, bridging,
drawbridging/tombstoning, and/or missing passive devices” (col. 2, ll. 1-3).
This paragraph is missing from the current Specification which we consider
as an oversight because of the divisional status.
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way of channeling away and containing the flux and other effluents
liberated during reflow to preclude promotion or exacerbation of
solder ball migration and component decentering and tombstoning
(col. 1, l. 66-col. 2, l. 4).
5. Leal teaches additional passive device 102 not embedded in the
encapsulant 126, making it easily accessible for testing and
replacement (¶ [0022]).

PRINCIPLES OF LAW
“‘The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.’”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
“One of the ways in which a patent’s subject matter can be proved obvious
is by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent’s claims.”
KSR, 550 U.S. at 419-20. The Supreme Court further recognized that
“[w]hen there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp.” Id. at 421.
It is not necessary that the prior art suggest the combination to achieve
the same advantage or result discovered by Applicant. See In re Kahn, 441
F.3d 977 (Fed. Cir. 2006).

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ANALYSIS
Claims 1-5
Appellants argue that the purpose of the claimed invention, as recited
in paragraph 82 of the Specification, is to prevent solder bridging by using
the reservoirs (App. Br. 11). Appellants assert (App. Br. 12) that the lack of
a reservoir in Honda’s Figures 4-6 means that the excess solder in the finger
groove results in solder movement (bridging) when a passive component is
placed in the groove. Appellants further assert that Jairazbhoy’s Figure 4
shows that there is a solder mask all the way under the passive component so
a reservoir is provided in the solder mask to prevent solder from migrating
(preventing movement) when a passive component is placed in the finger
groove (App. Br. 12). Based on the above stated assertions, Appellants
conclude that Honda and Jairazbhoy teach away from their combination and
the claimed invention (App. Br. 12). We are not persuaded by Appellants’
arguments.
At the outset, we note that Appellants’ Specification proposes that the
system sets out to find solutions for problems such as bridging (i.e., short-
circuit) and drawbridging/tombstoning (i.e., open circuit) (FF 1).
Accordingly, contrary to Appellants’ arguments (App. Br. 11), Appellants’
system including reservoirs also resolves the problem of tombstoning--not
just bridging.
We agree with the Examiner’s finding (Ans. 3) that Honda (e.g. Fig.
1) teaches an integrated circuit package having a leadframe 1 with a lead
finger 2 and a groove (Fig 5, element 19) with a conductive bonding agent
(FF 2) and an electronic device 15 in the groove to be held by the conductive
bonding agent. We also agree with the Examiner (Ans. 3) that Jairazbhoy
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(Fig. 4) teaches an integrated circuit package having a groove 18 with a
connected reservoir 20 to prevent solder migration during reflow (FF 3).
The dispositive issue is whether it would have been obvious to one of
ordinary skill in the art at the time the invention was made to include the
reservoirs of Jairazbhoy in the package of Honda to prevent solder migration
(i.e., prevent movement) as recited by the Examiner (Ans. 3).
Appellants’ assertion (App. Br. 12) and Declaration under Oath that
solder movement (bridging) in Honda occurs because of the absence of
reservoirs, begs the question of why one skilled in the art would not try to
solve Honda’s problem with a finite number of identified, predictable
solutions, within his/her technical grasp? KSR, 550 U.S. at 421. We agree
with the Examiner (Ans. 3) that adding reservoirs as taught by Jairazbhoy
(Abstract, last sentence) provides a solution to this problem (FF 4) by
preventing Honda’s solder movement and this solution is within the hand of
a skilled artisan because it is expressly proposed by Jairazbhoy. We further
note that Jairazbhoy, much like Appellants’ Specification, recognizes that
these reservoirs not only would resolve problems of solder movement
(bridging or short circuit), but also, problems of tombstoning (i.e., open
circuit) (FF 4). Accordingly, we do not agree with Appellants that the
references teach away from the combination (App. Br. 13).
In addition, while we agree with the Examiner that just because the
Appellants have different reasons for combining does not imply that the
references teach away from the combination (see In re Kahn, 441 F.3d 977
(Fed. Cir. 2006). Nonetheless, the express teachings of Jairazbhoy for the
advantages of adding reservoirs (FF 4) provide for the same solutions to the
same problems as recited in Appellants’ own Specification (FF 1).
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Accordingly, we will affirm the Examiner’s rejection of claim 1.
With respect to claims 2-5, we adopt the Examiner’s findings of fact and
conclusions as recited in the Answer (Ans. 10-12). Thus, we will also affirm
the Examiner’s rejections of claims 2-5.

Claim 6
With respect to claim 6, we adopt the Examiner’s findings of fact and
conclusions as recited in the Answer (Ans. 12). Thus, we will also affirm
the Examiner’s rejection of claim 6.

Claims 7, 8, 10, and 11
With respect to claim 7, 8, 10, and 11, we adopt the Examiner’s
findings of fact and conclusions as recited in the Answer (Ans. 12-14), and
we reiterate our findings of fact and conclusions as set forth with respect to
claim 1, supra. Thus, we will also affirm the Examiner’s rejections of
claims 7, 8, 10, and 11.

Claim 9
With respect to claim 9, Appellants argue (App. Br. 23) that the
Honda package is embedded in protecting molded resin 8 (FIG. 1), which is
an encapsulant and without which the Honda package would be inoperative.
We are not persuaded by Appellants’ argument because the proposed
modification by the Examiner was to add a passive device 102 exterior to the
integrated circuit as taught by Leal (FF 5), thereby satisfying the
requirements of claim 9. The fact that Leal’s passive device 102 is not
embedded in the encapsulant 126 does not mean that all the other elements
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of Honda have to be removed from the protective molded resin. In other
words, the only modification is the addition of a passive device not
embedded in the encapsulant--not removal of all other components from the
encapsulant. Accordingly, we will also affirm the Examiner’s rejection of
claim 9.

Claim 12
With respect to claim 12 we adopt the Examiner’s findings of fact and
conclusions as recited in the Answer (Ans. 14), and we will also affirm the
Examiner’s rejection with respect to this claim.

CONCLUSION
The combination of Honda in view of Jairazbhoy teaches the
limitation of “a lead finger having a groove with a connected reservoir.”

ORDER
The decision of the Examiner to reject claims 1-12 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).

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AFFIRMED

ELD

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