Ex Parte Gogoi et al

Patent Trial and Appeal Board

Mar 8, 2017

13745072 (P.T.A.B. Mar. 8, 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.
13/745,072 01/18/2013 Bishnu Prasanna Gogoi ONS01553 3110
132239 7590 03/10/2017
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (KJ)
5005 E. MCDOWELL ROAD, Maildrop A700
Phoenix, AZ 85008
EXAMINER
NGUYEN, SOPHIA T
ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
patents @ onsemi. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BISHNU PRASANNA GOGOI,
ROBERT BRUCE DAVIES, PHUONG LE, and
ALEXANDER J. ELLIOTT1
Appeal 2016-001563
Application 13/745,072
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
1 The real party of interest is Semiconductor Components Industries LLC.
2 In our Opinion below, we refer to the Final Action electronically delivered
on January 26, 2015 (“Final Act.”); the Appeal Brief filed June 23, 2015
(“App. Br.”); and the Examiner’s Answer electronically delivered on
September 16, 2015 (“Ans.”). Appellants did not file a Reply Brief.
Appeal 2016-001563
Application 13/745,072
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a semiconductor or electronic package
structure and method for making same. Claims 1, 13, 19, 22. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A semiconductor package structure comprising:
a substrate having a first well region extending from a
first major surface, the first major surface defining a generally
horizontal plane;
a first interposer structure attached to the substrate within
the first well region below the generally horizontal plane; and
a first electrical device comprising a power
semiconductor device, the power semiconductor device having
a control electrode and a first current carrying electrode on a
first surface and a second current carrying electrode on a second
surface opposite to the first surf ace, wherein:
the first surface faces and overlaps the first interposer and
faces and overlaps the substrate adjacent the well region,
the control electrode is attached to the first interposer
structure,
the first current carrying electrode is attached to the
substrate along the generally horizontal plane, and
the second current carrying electrode is above the
generally horizontal plane and electrically coupled to the
substrate.
App. Br. 22 (Claims App’x).
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Appeal 2016-001563
Application 13/745,072
REFERENCES
The Examiner relies
appeal:
on the following prior art in rejecting the claims
Carpenter et al.,
(“Carpenter”)
US 4, 290,079 Sept. 15, 1981
Weiler et al.,
(“Weiler”)
US 5,644,167 July 1, 1997
Nishide et al.,
(“Nishide”)
US 2002/0011659 Al Jan. 31,2002
Ochi US 6,832,356 B1 Dec. 14, 2004
Hoang et al.,
(“Hoang”)
US 7,098,542 B1 Aug. 29, 2006
Konishi et al.,
(“Konishi”)
US 7,176,579 B2 Feb. 13, 2007
Standing US 2008/0230889 Al Sept. 25, 2008
Cho et al., (“Cho”) US 8,164,185 B2 Apr. 24, 2012
Haralabidis et al.,
(“Haralabidis”)
US 2013/0113117 Al May 9, 2013
Viswanathan et al.,
(“Viswanathan”)
US 2014/0070397 Al Mar. 13, 2014
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a): (1) claims 1, 3—7, 10-16, 18—20, 22, and 24—25 over Hoang in
view of Standing and Konishi; (2) claims 2, 17, and 21 over Hoang in view
of Standing, Konishi, and Haralabidis; (3) claim 8 over Hoang in view of
Standing, Konishi, and Weiler; (4) claim 9 over Hoang in view of Standing,
Konishi, and Nishide; and (5) claim 23 over Hoang in view of Standing,
Konishi, and Ochi. Final Act. 2, 15, and 17—19; Ans. 3, 16, 18, 19.
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Application 13/745,072
OPINION
The rejection of each appealed claim relies on at least the combination
of Hoang, Standing, and Konishi. Final Act. 2, 15, 17—19; Ans. 3, 16, 18,
19. Our decision in this case turns on whether the Examiner has established
that these references are properly combined.
The Examiner finds, with respect to claim 1, that Hoang discloses
a semiconductor package structure comprising:
a substrate [110] having a first well region [112(1)]
extending from a first major surface [110b], the first major
surface [110b] defining a generally horizontal plane;
a first interposer structure [120(2)] attached to the
substrate [110] within the first well region [112(l)]below the
generally horizontal plane; and
a first electrical device [120(1)] having a first electrode
and a second electrode on a first surface, wherein:
the first surface faces and overlaps the first interposer
[120(2)] and faces and overlaps the substrate adjacent the well
region [112(1)],
the first electrode is attached to the first interposer
structure [120(2)],
the second electrode is attached to the substrate [110].
Final Act. 2—3.
The Examiner finds that Hoang fails to disclose a first electrical
device comprises a power semiconductor device, the power semiconductor
device having a control electrode and a first current carrying electrode on a
first surface and a second current carrying electrode on a second surface
opposite to the first surface. Id. at 3. However, according to the Examiner,
Standing discloses these limitations. Id. The Examiner concludes that one
of skill in the art would have found it obvious to incorporate this teaching of
Standing into the method of Hoang, motivated by “providing a suitable IC
device including in a multi-chip package disclosed by Hoang.” Id.
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Appeal 2016-001563
Application 13/745,072
The Examiner further concludes that it would have been obvious to
modify Hoang and Standing to include a control electrode attached to the first
interposer structure, and a first current carrying electrode attached to the
substrate, as required by claim 1, for the purpose of providing a designed
connection of a designed circuit. Id. at 4.
The Examiner finds that Hoang combined with Standing fail to disclose
wherein the second current carrying electrode is electrically coupled to the
substrate, but that Konishi discloses electrical contacts on the second surface
of a first electrical device are electrically coupled to the substrate. Id. The
Examiner concludes that one of ordinary skill in the art at the time of the
invention would have found it obvious to modify Hoang and Standing with
the teaching of Konishi:
for the purpose of providing desired electrical connection of the
second current carrying electrode; providing a designed
connection of a designed circuit; providing a hybrid integrated
circuit device constitutes a high frequency power amplifying
device; achieving the miniaturization of semiconductor module
in which a plurality of semiconductor chips and plurality of
electronic parts are incorporated.
Id.
Appellants argue, inter alia, the Examiner’s conclusions of
obviousness are based on impermissible hindsight reconstruction. App. Br.
12. In answer, the Examiner finds that Hoang discloses that 1C devices can
be any well-known devices in the art and Standing discloses an 1C device is
a power device. Ans. 25. Asa consequence, the Examiner concludes that
the combination of Hoang and Standing teaches the claimed invention. Id.
ft is not enough, however, for the Examiner to merely demonstrate
that elements of the claimed invention were independently known in the
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Application 13/745,072
prior art, as every element of a claimed invention often can be found in the
prior art. MetalCraft of Mayville, Inv. v. The Toro Co., 2017 WL 631749, at
*4 (Fed. Cir. Feb. 16, 2017) (citing In re Kotzab, 217 3d 1365, 1370 (Fed.
Cir. 2000)). “Knowledge of a problem and motivation to solve it are
entirely different from motivation to combine particular references.”
Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008).
The Examiner’s reasoning for combining the references suggests that a
skilled artisan, presented with the references, would have understood that
they could be combined, which is not enough. PersonalWeb Techs., LLC v.
Apple, Inc., 2017 WL 587132, at *8 (Fed. Cir. Feb. 14, 2017). Motivation
for the skilled artisan to pick out the references and combine them to arrive at
the claimed invention must be provided. Id. (citing Belden Inc. v. Berk-Tek
LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[OJbviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
the claimed invention.” (emphasis in original)).
Here, the Examiner presents us with the former, but not the latter. We
find the word “motivation” present in the Final Action and Answer, but
without explanation or reasoning for concluding that one of skill in the art
would have combined these particular references to produce the claimed
invention without relying on facts gleaned only through hindsight, an
improper basis for obviousness. See KSRInt’l co. Teleflex Inc., 550 U.S.
398, 421 (2007). “The invention must be viewed not after the blueprint has
been drawn by the inventor, but as it would have been perceived in the state
of the art that existed at the time the invention was made.” Sensonics Inc. v.
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Application 13/745,072
Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect
Planning Corp. v. Feil, 11A F.2d 1132, 1138 (Fed. Cir. 1985)).
The motivations to combine the references provided in the Final
Action and Answer lack articulated reasoning with some rational
underpinning, and instead rely on hindsight. We therefore find that the
Examiner has not established a prima facie case of obviousness of claim 1
over the combination of Hoang, Standing, and Konishi.
Because the obviousness rejection of all other appealed claims also
require, at a minimum, combining Hoang, Standing, and Konishi, we find no
prima facie case of obviousness of these claims.
CONCLUSION
We do not sustain the Examiner’s rejections of claims 1—25.
DECISION
The Examiner’s decision is reversed.
REVERSED
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