Ex Parte Ishibashi et al

Patent Trial and Appeal Board

Mar 21, 2017

14051310 (P.T.A.B. Mar. 21, 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.
14/051,310 10/10/2013 Hidetoshi ISHIBASHI 005700-ME0052 1094
78198 7590 03/23/2017
StiiHehaker & Rraokett PP EXAMINER
8255 Greensboro Drive LEE, HSIEN MING
Suite 300
Tysons, VA 22102 ART UNIT PAPER NUMBER
2823
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDETOSHIISHIBASHI, YOSHIHIRO YAMAGUCHI,
NAOKI YOSHIMATSU, and HIDEHIRO KOGA
Appeal 2016-001493
Application 14/051,3101
Technology Center 2800
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
JEFFREY R. SNAY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appellants state that the real party in interest is “Mitsubishi Electric
Corporation” (Appeal Brief filed May 26, 2015, hereinafter “Appeal Br.,”
2).
Appeal 2016-001493
Application 14/051,310
The Applicants (hereinafter the “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 5, 6,
and 13.2,3 Claims 1—4, 7—12, 14, and 15 are also pending but have either
been allowed or subjected to an objection only (Final Act. 2, 6—7). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
BACKGROUND
The subject matter on appeal relates to a semiconductor device and to
a method of its manufacture (Specification, hereinafter “Spec.,” 1,11. 6—7).
Figure 1 is illustrative and is reproduced below:
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2 Appeal Br. 6—11; Reply Brief filed on November 12, 2015, hereinafter
“Reply Br.,” 2—3; Final Office Action (notice emailed October 10, 2014),
hereinafter “Final Act.,” 3—6; Examiner’s Answer (notice emailed
September 11, 2014), hereinafter “Ans.,” 2—7.
3 The final rejection under 35 U.S.C. § 112(b) of claims 1, 2, 5, 6, 10, and 13
has been withdrawn (Ans. 2). ft would appear, then, that the Examiner’s
citation to and reliance on 35 U.S.C. § 112, Tf 2, in the Final Action (Final
Act. 2) was incorrect. In this regard, we note that the subject application
was filed in the United States on October 10, 2013.
2
Appeal 2016-001493
Application 14/051,310
Figure 1 above is said to be a sectional view showing a semiconductor
device 101 according to one preferred embodiment, wherein the
semiconductor 101 includes, inter alia, a plate electrode 7 connected onto
semiconductor chip 5 using a bonding material 6 such as solder and silver
(Spec. 6,11. 1-3; 7,1. 9-9,1. 9).
Representative claim 5 is reproduced from page 10 of the Appeal
Brief (Claims Appendix; emphasis added), as follows:
5. A semiconductor device comprising:
a plurality of semiconductor chips; and
a plate electrode directly disposed via bonding material
on said plurality of semiconductor chips,
wherein said plate electrode has a bonding plate portion
bonded to said plurality of semiconductor chips for connecting
the plurality of semiconductor chips and a protruded portion
which is protruded erectly from said bonding plate portion,
and said protruded portion has an ultrasonic bonding portion
which is parallel with said bonding plate portion and to which
an external electrode is ultrasonic bonded.
Claim 13 is directed to a method of manufacturing a semiconductor device
including step (a) reciting “directly disposing via bonding material, on a
plurality of semiconductor chips, a plate electrode . . . .” (id. at 11).
REJECTION ON APPEAL
The Examiner rejected claims 5, 6, and 13 under 35 U.S.C. § 103(a)
(pre-AIA)4 as unpatentable over Yamaguchi et al.5 (hereinafter “Yamaguchi)
in view ofNishiuchi et al.6 (hereinafter Nishiuchi) (Final Act. 3—6; Ans. 2—
7).
4 As noted earlier, the current application was filed on October 10, 2013.
5 US 2011/0260315 Al, published October 27, 2011.
6 US 2009/0209065 Al, published August 20, 2009.
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Appeal 2016-001493
Application 14/051,310
DISCUSSION
The dispositive issue raised in this appeal is whether the Examiner
correctly construed the disputed limitations highlighted in claims 5 and 13
above to read on Yamaguchi’s emitter electrode 104 bonded (via lead-free
solder materials 152 and 160) to cylindrical conductors 150 and 158, which
in turn are bonded (via lead-free solder materials 148 and 156) to
semiconductor chips 120 and 122, as shown in Yamaguchi’s Figures 8 and
10 (Final Act. 4—5; Ans. 4—7; Appeal Br. 6—8). For the reasons given by the
Appellants, we hold that the Examiner’s claim construction is unreasonably
broad.
It is well-settled that the PTO’s “construction [must] be ‘consistent
with the specification, . . . and . . . claim language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the
art.’” See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259—60 (Fed. Cir.
2010) (quoting/?? re Bond 910 F.2d 831, 833 (Fed. Cir. 1990)).
Here, the plain meaning of “bonding material” as recited in the claims
would have indicated to one skilled in the relevant art that the material is one
that provides an adhesive or bonding function. That understanding or usage
is consistent with the description found in the Specification, which indicates
that the “bonding material” is a material “such as solder and silver” (Spec. 6,
11. 1—3). Although the Examiner asserts that Yamaguchi’s cylindrical
conductors provides a “combining function” (Ans. 7), the Examiner does not
direct us to evidence in support of such an assertion. At most, Yamaguchi
teaches that the cylindrical conductors are merely part of a combination in
which they are bonded to or combined with an electrode on one side and
semiconductor chips on the other using solder as a bonding material (Figs.
4
Appeal 2016-001493
Application 14/051,310
8, 10; 48—50). Thus, when read in context with the rest of the claim
language (in particular “directly disposed” in claim 5 or “directly disposing”
in claim 13) and the Specification, one skilled in the relevant art would not
have reasonably interpreted the disputed limitations to read on a structure in
which Yamaguchi’s cylindrical conductors are present as an intervening
material between the electrode, solder materials, and the semiconductor
chips.
For these reasons and those given by the Appellants, we do not sustain
the Examiner’s rejection.
SUMMARY
The Examiner’s final decision to reject claims 5, 6, and 13 under 35
U.S.C. § 103 as unpatentable over Yamaguchi and Nishiuchi is reversed.
REVERSED
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