Ex Parte Donofrio et al

Patent Trial and Appeal Board

Jun 6, 2017

13027006 (P.T.A.B. Jun. 6, 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.
13/027,006 02/14/2011 Matthew Donofrio 5308-1384 5957
146366 7590 06/08/2017
S»aae Patent Crmim/CYee
EXAMINER
PO BOX 30789
RALEIGH, NC 27622-0789
NADAV, ORI
ART UNIT PAPER NUMBER
2811
NOTIFICATION DATE DELIVERY MODE
06/08/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW DONOFRIO,
JOHN ADAM EDMOND,
HUA-SHUANG KONG,
PETER S. ANDREWS, and
DAVID TODD EMERSON
Appeal 2016-004091
Application 13/027,0061
Technology Center 2800
Before DONNA M. PRAISS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellants identify Cree, Inc. as the real party in interest. Br. 1.
2 In this decision, we refer to the Specification filed Feb. 14, 2011 (“Spec.”),
the Final Office Action mailed Jan. 29, 2015 (“Final Act.”), the Appeal Brief
filed Aug. 31, 2015 (“Br.”), and the Examiner’s Answer mailed Nov. 16,
2015 (“Ans.”).
Appeal 2016-004091
Application 13/027,006
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6, 8, 9, 42, 43, 45, 46, and 53 as obvious
under 35 U.S.C. § 103(a) over Duong,3 Du,4 David,5 Suehiro,6 and Ito.7 Br.
4; Final Act. 2, 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal relates to a method of forming a
semiconductor device with a non-volatile memory having a floating gate
using nanocrystals as a hard mask. Spec. 113. Claims 1 and 42 are
illustrative (disputed matter italicized):
1. An electronic device comprising:
a packaging substrate having a packaging substrate face;
a first electrically conductive contact pad at the packaging
substrate face;
a second electrically conductive contact pad at the
packaging substrate face, the second electrically conducting pad
comprising first and second portions disposed on opposite sides
of an intervening portion of the first electrically conductive
contact pad;
a first light emitting diode die bridging the first portion of
the second electrically conductive pad and the intervening
portion of the first electrically conductive pad, the first light
emitting diode die including first anode and cathode contacts
respectively coupled to the first and second electrically
conductive pads using metallic bonds, wherein widths of the
3 Duong et al., US 8,115,217 B2, iss. Feb. 14, 2012 (“Duong”).
4 Du, US 7,081,667 B2, iss. July 25, 2006 (“Du”).
5 David et al., US 2010/0308354 Al, pub. Dec. 9, 2010 (“David”).
6 Suehiro et al., US 2011/0114989 Al, pub. May 19, 2011 (“Suehiro”).
7 Ito et al., US 4,916,464, iss. Apr. 10, 1990 (“Ito”).
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Application 13/027,006
metallic bonds between the first anode contact and the first
electrically conductive pad and between the first cathode contact
and the second electrically conductive pad are at least 60percent
of a width of the first light emitting diode die; and
a second light emitting diode die the second portion of the
second electrically conductive pad and the intervening portion of
the first electrically conductive pad, the second light emitting
diode die including second anode and cathode contacts
respectively coupled to the first and second electrically
conductive pads using metallic bonds, wherein widths of the
metallic bonds between the second anode contact and the first
electrically conductive pad and between the second cathode
contact and the second electrically conductive pad are at least
60 percent of a width of the first light emitting diode die.
42. An electronic device comprising:
a submount having a plurality of electrically conductive
pads at a surface thereof;
a plurality of light emitting diode (LED) die, wherein
respective ones of the plurality of LED die mechanically bridge
and are electrically connected to adjacent ones of the plurality
of electrically conductive pads to provide serial interconnection
of the plurality of LED die, wherein each of the LED die
comprises,
a diode region having first and second opposing
faces and including therein an n-type layer and a p-type
layer, wherein the first face is between the second face
and the packaging substrate,
an anode contact that ohmically contacts the p-
type layer and extends on the first face between the first
face and the packaging substrate, and
a cathode contact that ohmically contacts the n-
type layer and extends on the first face between the first
face and the packaging substrate, wherein adjacent LED
die are spaced apart by distances in the range of about 20
micrometers to about 500 micrometers.
Br. 13, 15 (Claims App’x).
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Application 13/027,006
OPINION
The Examiner determines that claims 1—4, 6, 8, 9, 42, 43, 45, 46, and
53 would have been obvious to one of ordinary skill in the art at the time of
the invention for the reasons stated on pages 2—11 of the Final Action and
13—30 of the Answer.
Appellants do not separately argue the patentability of claims 4, 6, 8,
43, 45, 46, and 53. Br. 5—11. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), claims 4, 6, and 8 will stand or fall together with
independent claim 1 and claims 43, 45, 46, and 53 will stand or fall together
with independent claim 42.
Claim 1
Appellants argue that the Examiner erred in rejecting claim 1 over Du
and Duong because “neither Du nor Duong disclose or suggest the widths of
the metallic bonds between the first and second light emitting diode dies and
the conductive pad being at least 60 percent of the width of the first light
emitting diode die.” Br. 6. Appellants contend that the Examiner’s finding
that the widths required by claim 1 would have been obvious to provide
better electrical contacts between the pads and the contacts is conclusory and
that the references teach away from such a modification. Id. Specifically,
Appellants argue that “[ijncreasing the width of the gold stud bumps 755 [in
Duong] would tend to increase the potential for an electrical short to form
between the gold stud bumps 755.” Id. at 6—7. Appellants further argue that
“Du does not appear to provide any disclosure or description as to the nature
of the bond used to connect the chips 242 to the lead portions 226, 228.” Id.
at 7.
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Application 13/027,006
The Examiner responds that Duong’s Figure 8, which is a cross
section of the LED die and gold bumps depicted in Figure 7, shows “[o]nly
two small gaps between the three bumps 755 are not occupied by said
bumps.” Ans. 13. Based on Figure 8 and three out of the five unit areas of
bumps plus gaps being bumps for contacting the conductive pad, the
Examiner finds that “the area occupied by the three bumps is much larger
than the area of the two small gaps” and that the width of the metallic bonds
between the die and the conductive pad is at least 60 percent of the width of
the die as required by claim 1. Id. at 13—15. Regarding Du, the Examiner
further finds that “it is well-known in the art and it is advantageous to
connect two elements by using large contact area;” therefore, it would have
been obvious to a skilled artisan to “select a contact area between the die and
the contacting pads 222 and 220 [of Du] to be as large as possible without
short circuiting the lead fingers to each other.” Id. at 16.
We are not persuaded by Appellants’ arguments that the Examiner
reversibly erred in rejecting claim 1 because the Examiner’s finding that
Duong’s Figure 8 shows a relative contact area between the gold bumps and
conductive pad is at least 60% of a width of the LED die as required by
claim 1, is supported by the record. Duong, Fig. 8. In addition, Appellants
do not adequately rebut the Examiner’s finding that it is well-known in the
art that it is advantageous to have a large contact area connecting two
elements (Ans. 16). Accordingly, we sustain the Examiner’s rejection of
claim 1.
Claims 2 and 3
Appellants argue that the Examiner erred in rejecting claims 2 and 3
over Du and Duong because “Du does not provide any disclosure or
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Application 13/027,006
suggestion of mounting the chips 242 in an asymmetrical manner on lead
portions 226 and 228 shown in FIG. 4” and Duong does not provide the
teachings missing from Du. Br. 11. Appellants also contend that Duong
does not show first and second dies bridge from an intervening portion of a
first pad to respective first and second portions of a second pad “as
explained in Section II.” Id.
The Examiner responds that Duong discloses in Figure 6B “surface
areas of anode and cathode contacts 622 and 620 which are not identical”
and finds that this means Duong’s contacts are asymmetric as required by
the claims. Ans. 29.
We are not persuaded by Appellants’ arguments that the Examiner
reversibly erred in rejecting claims 2 and 3 because the Examiner’s finding
that Duong discloses asymmetric anode and cathode contacts is supported by
the record and not rebutted by Appellants.
In addition, Appellants do not adequately explain why Duong does
not disclose first and second dies bridge an intervening portions of a first
pad. Appellants direct us to Section II of its Appeal Brief for its argument,
however, Section II addresses the width required by claim 1. See Br. 5—7.
Therefore, we are not persuaded of error in the Examiner’s rejection of
claims 2 and 3.
Claim 9
Appellants argue that the Examiner erred in rejecting claim 9 over Du
and Duong because Du’s filler, while thermally conductive and electrically
insulating, has not been shown to be reflective, as required by claim 9. Br.
11.
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The Examiner responds that “Du does not specify whether the
electrically insulating material is reflective or not reflective.” Ans. 30. The
Examiner finds that “[sjince any reflective insulating material can be used,
then the rejection recites that.” Id. The Examiner further states “substitution
of materials is not patentable even when the substitution is new and useful.”
Id. (citing Safetran Systems Corp. v. Federal Sign & Signal Corp. ,215
USPQ 979 (N.D. 111. 1981)).
We agree with Appellants that the Examiner reversibly erred in
rejecting claim 9 because the Examiner has not shown adequately why Du’s
disclosure of any electrically insulating material would have suggested to
those having ordinary skill in the art a reflective filler. The cited record in
this appeal does not reflect that reflective fillers were known or substitutable
for electrically insulating fillers. Because the Examiner has not established
(1) that reflective fillers were known or (2) that electrically insulating fillers
such as those disclosed by Du are known to be or expected to be reflective,
the fact that Du does not specify whether its fillers are reflective does not
suggest the use of reflective fillers. In reFritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992) (“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless
the prior art suggested the desirability of the modification.” (citing In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984))). Therefore, in the absence of
any reason for modifying the combination such that the filler is reflective as
required by claim 9, we find that the rejection of claim 9 is not supported by
a preponderance of the evidence. See In re Royka, 490 F.2d 981, 985
(CCPA 1974) (to establish prima facie obviousness of a claimed invention,
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all the claim limitations must be taught or suggested by the prior art).
Accordingly, we reverse the Examiner’s rejection of claim 9.
Claim 42
Appellants argue that the Examiner erred in rejecting claim 42 over
David, Duong, Ito, and Suehiro because “David does not teach respective
ones of the LED die ‘mechanically bridge and are electrically connected to
adjacent ones of the plurality of electrically conductive pads to provide serial
interconnection of the plurality of LED die’” as required by claim 42. Br. 9.
Appellants do not dispute the Examiner’s finding that Suehiro discloses a
plurality of LED die connected serially in Figures 11 and 12, but contend
that Suehiro forms the serial connections on top of a surface pattern and that
the required “mechanically bridge adjacent conductive pads” is “not
mechanically disposed on a continuous surface pattern as disclosed in
Suehiro.” Id. at 10. Appellants also argue that the Examiner’s reasons for
modifying David with the teachings of Duong, Ito, and Suehiro are not
based on any specific evidence or suggested by the prior art. Id. (“[T]o
‘reduce the size of the device, to simplify the processing steps of making the
device and in order to be able to simultaneously test the plurality of light
emitting diodes, and in order [to] use the device in an application which
requires specific illumination from the light emitting diodes, respectively.’”
(quoting Final Act. 4)).
The Examiner responds that Appellants’ argument seeks to include
the limitation that “two dies are connected by a conductor formed over some
type of a gap” in the term “mechanically bridge” recited in claim 42. Ans.
22. The Examiner finds that such a construction of “mechanically bridge” is
not supported by the Specification because Figure 7B shows die 100c and
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1 OOd serially connected by anode pad 184, which is also mechanically
disposed on a continuous surface pattern (submount body 182). Id. at 22—
23. The Examiner further finds that Figure 1 of David shows LED die 10
mechanically bridges the gap between anode and cathode pads 18 and 20 of
submount 12. Id. at 24. In addition, the Examiner finds that “[i]t is well
known in the art that connecting plurality of light emitting diode (LED) dies
in series provides high power output” whereas connecting in parallel
provides high current and each of Duong, Ito, and Suehiro teaches serial
interconnection. Id. at 26 (emphasis omitted). The Examiner determines
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to connect David’s plurality of LED dies in series when
using in an application that requires high power output. Id.
We are not persuaded by Appellants’ arguments that the Examiner
reversibly erred in rejecting claim 42 for a number of reasons. First, claim
42 does not require a gap of any particular dimension or description,
therefore, Appellants argument is based on a limitation not found in the
claim. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not
appearing in the claims cannot be relied upon for patentability). Second,
even if the term “mechanically bridge” requires such a gap, the Examiner’s
finding that David’s LED die has such a structure is supported by the record
(David Fig. 1) and not rebutted by Appellants. Third, Appellants’ arguments
distinguishing the prior art individually, i.e., that Suehiro does not disclose
the mechanically bridge element and David does not disclose the serial
connection element of claim 42, does not address the Examiner’s rejection
which is over the combination of the art. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[Ojne cannot show nonobviousness by attacking references
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individually where ... the rejections are based on combinations of
references.”). In addition, the Examiner’s finding that it is well known in
the art to connect LED dies in series for high power output is not disputed by
Appellants and a further reason for modifying David by connecting the LED
dies in series.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 42 as obvious over the combination of David, Duong, Ito,
and Suehiro.
CONCLUSION
We affirm the Examiner’s rejections of claims 1—4, 6, 8, 42, 43, 45,
46, and 53 under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejection of claim 9 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s decision is affirmed-in-part.
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).
AFFIRMED-IN-PART
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