Ex Parte Hernandez et al

Board of Patent Appeals and Interferences

Oct 28, 2009

10741230 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANUEL HERNANDEZ, YEN FU, ELLIS CHA, and
HONG TIAN
____________

Appeal 2009-010870
Application 10/741,230
Technology Center 1700
____________

Decided: October 29, 2009
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Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/741,230

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12 (Appeal Brief filed July 21, 2008, hereinafter “Br.,” at 2; Final
Office Action mailed December 20, 2007). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ claimed invention relates to a method of conductive ball
bonding (Specification, hereinafter “Spec.,” ¶ [0001]). The method
comprises the steps of, inter alia, picking up a conductive ball with a holder,
placing the ball next to a bonding pad, and partially melting the ball after
placement (Spec. ¶ [0009]; claim 1). According to Appellants, the inventive
method relieves the need for the “electronic flame off” (EFO) process,
wherein a spark is generated to create the ball at the end of a wire in
conductive ball bonding of components of, for example, a hard disk drive
(Spec. ¶¶ [0005] and [0009]).
Claim 1 reads as follows:
1. A method of forming a conductive ball bonding comprising:
providing a conductive ball;
picking up said conductive ball with a holder;
placing said conductive ball, with said holder, in contact
with a bonding pad; and
at least partially melting said conductive ball after said
placing operation.
(Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed October 7, 2008, hereinafter
“Ans.,” 3):
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Application 10/741,230

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Senuma 6,198,599 B1 Mar. 6, 2001
Sakai1 JP 7-302796 A Nov. 14, 1995

The Examiner rejected claims 1-12 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Senuma and Sakai (Ans. 4).

ISSUES
As to claim 1, the Examiner found that Senuma teaches every
limitation of the claimed method except for “picking up said conductive ball
with a holder” (Ans. 4-5). To account for this difference, the Examiner
relied on Sakai, which was found to teach “providing a plurality of
conductive balls on a tray and picking up a first one of [the] conductive balls
from [the] tray with a suction force via a holder” (Ans. 4). The Examiner
then concluded that it would have been obvious to one of ordinary skill in
the art to modify the method of Senuma by using the step of picking up a
conductive ball by a holder via vacuum suction, as taught by Sakai, “in order
to reliably position the conductive balls on [a] substrate” (id.).
Appellants, on the other hand, contend that “Senuma does not teach or
suggest picking up a conductive ball with a holder and placing the
conductive ball in contact with a bonding pad with a holder” and that Sakai
does not cure this deficiency (Br. 4). Specifically, Appellants assert that
Sakai does not teach picking up solid solder balls as implicitly required by

1 With respect to Sakai, the Examiner relied on a computer-generated
English language translation in addition to an abstract retrieved from the
EAST database (Ans. 4 and 5-6; Final Office Action entered February 7,
2006 at 3; Final Office Action entered December 20, 2007 at 4). The
computer-generated translation appears to be substantially identical in
content to a formal translation provided by the United States Patent and
Trademark Office on May 22, 2009.
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claim 1, but rather “fluidized” (which Appellants interpret as molten) solder
balls that are placed onto a substrate (Br. 5).
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s findings
that Sakai teaches picking up a conductive ball with a holder, wherein the
ball is at least partially melted after placing it in contact with a bonding pad,
as required in claim 1?

FINDINGS OF FACT (“FF”)
1. Figure 5 of Senuma is reproduced below:

Figure 5 depicts a conductive ball 32a placed in contact with a
conductive terminal (i.e., bonding pad) 27 (col. 5, ll. 11-26).
2. Senuma discloses that the conductive ball is ultrasonically
bonded to the conductive terminal 27 after it is placed in
contact with the terminal (col. 5, ll. 21-27 and 29-37).
3. Senuma does not teach picking up a conductive ball with a
holder.
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4. Sakai teaches reliably picking up a solder ball (i.e., conductive
ball) from a container with an adsorption head (i.e., holder),
placing it in contact with a substrate (i.e., bonding pad), and
fusing (i.e., at least partially melting) the ball after placing it in
contact with the substrate (Abstract; ¶¶ [0002], [0007], [0019],
and [0020]).
5. Sakai teaches that the container storing the solder balls is
vibrated to “fluidize” the solder balls (i.e., make them flow) (¶¶
[0006] and [0007]).
6. Sakai teaches that fluidizing the solder balls causes them to
flow to an adsorption head (i.e., holder), which takes up the
balls by suction (¶ [0007]).
7. Sakai does not disclose any melting of the solder balls as a
result of vibrating the container to fluidize the solder balls.

PRINCIPLES OF LAW
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).

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ANALYSIS
Appellants rely on the same arguments for all the appealed claims (Br.
4-7). Accordingly, we select claim 1 as representative of the appealed
claims and confine our discussion to this selected claim. 37 C.F.R. §
41.37(c)(1)(vii).
We find no persuasive merit in Appellants’ contention that the
teachings of Sakai regarding placing a “fluidized” solder ball onto a
substrate describes a solder ball that is molten before the placing step (Br. 4-
5). With respect to fluidizing solder balls, Sakai describes providing a
container for storing solder balls, in which the container can be vibrated to
cause the balls to fluidize or flow (FF 5). Contrary to Appellants’ belief,
Sakai discloses that the fluidization allows the solder balls to move (i.e.,
flow) to an adsorption head, which picks up the solder balls by suction (FF
6). Nothing in Sakai suggests any melting associated with vibrating the
container to fluidize the solder balls (FF 7). Indeed, Sakai discloses that the
solder balls are fused (i.e., melted) after they have been placed on the
substrate (FF 4). Thus, one of ordinary skill in the art would have
understood Sakai to teach a suction holder that picks up “fluidized” solder
balls that are in the solid state rather than the melted state. Preda, 401 F.2d
at 826.
For these reasons, Appellants have failed to show error in the
Examiner’s rejection based on the reliance on Sakai to resolve the
differences between the subject matter of claim 1 and Senuma (FF 1-4).
Moreover, Sakai alone discloses every limitation of claim 1 (FF 4). Thus,
we agree with the Examiner that the combined teachings of Sakai and
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Senuma would necessarily teach or suggest every feature of the claimed
subject matter of claim 1.

CONCLUSION
Appellants have failed to show reversible error in the Examiner’s
findings that Sakai teaches picking up a ball with a holder, wherein the ball
is at least partially melted after placing it in contact with a bonding pad, as
required in claim 1.

DECISION
The Examiner’s rejection of claims 1-12 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Senuma and Sakai 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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