Ex Parte Jeng et al

Patent Trial and Appeal Board

Mar 21, 2016

13270776 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/270,776 10/11/2011
43859 7590 03/23/2016
SLATER & MATSIL, LLP,
17950 PRESTON ROAD, SUITE 1000
DALLAS, TX 75252
FIRST NAMED INVENTOR
Shin-Puu Jeng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TSMll-0708 1286
EXAMINER
REIDA,MOLLYKAY
ART UNIT PAPER NUMBER
2816
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
docketing@slater-matsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIN-PUU JENG,
CHEN-HUA YU,
and JING-CHENG LIN
Appeal2014-005988
Application 13/270,776
Technology Center 2800
Before THU A. DANG, JAMES W. DEJMEK, and
STACY B. MARGOLIES, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-9, and 11-21. Claim 10 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
A. INVENTION
Appeal2014-005988
Application 13/270,776
According to Appellants, the invention relates to "[i]ntegrated
[c]ircuit [s]tructure [h]aving [d]ies with [c]onnectors of [d]ifferent [s]izes"
(Spec. 1 (Title)) (emphasis omitted).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A structure comprising:
an integrated circuit die having a first surface;
a first die attached to the first surface of the integrated
circuit die by first electrical connectors; and
a second die attached to the first surface of the integrated
circuit die by second electrical connectors, a size of one of the
second electrical connectors being smaller than a size of one of
the first electrical connectors.
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tago
Chan
Egawa
Kiong
Watanabe
US 2002/0070458 Al
US 2004/0106230 Al
US 2002/0209062 Al
US 2009/0230567 Al
US 2009/0289350 Al
June 13, 2002
June 3, 2004
Aug.20,2009
Sept. 1 7, 2009
Nov. 26, 2009
Claims 1-5, 9, 11, 12, 15, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Egawa and Watanabe.
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egawa, Watanabe, and Kiong.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egawa, Watanabe, Chan, and Kiong.
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Claims 8, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Egawa, Watanabe, and Chan.
Claims 17, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tago, and Watanabe.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tago, Watanabe, and Kiong.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tago, Watanabe, Kiong, and Chan.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Egawa and Watanabe teaches or would have suggested
first and second "electrical connectors," with "a size of one of the second
electrical connectors being smaller than a size of one of the first electrical
connectors" (claim 1 ).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Egawa
1. Egawa is directed to manufacturing a semiconductor device,
wherein Figure 3 is reproduced below:
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Application 13/270,776
FlG. 3
Figure 3, reproduced above, shows two second semiconductor chips
17a, 17b smaller than a first semiconductor chip 12 that are flip-chip joined
to the wire face of the first semiconductor chip 12 via bond members 18,
wherein the second semiconductor chips 17 a, 17b may be different in size
and characteristics (i-f 35), and the distance between the first semiconductor
chip 12 and the second semiconductor chips 17a, 17b range from 10 to 50
microns (i-f 36).
2. Under-fill resin is injected through the space between the
second semiconductor chips 17 a, 17b, such that both the spaces between the
first semiconductor chip 12 and the second semiconductor chips 17a, 17b are
filled with almost the same amount of under-fill resin (i-f 50).
Watanabe
3. Watanabe discloses mixedly mounting a plurality of chips in a
semiconductor package, wherein Figure 17 is reproduced below:
Fig. 17
2
\ 1
3 ~----7
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Application 13/270,776
Figure 17, reproduced above, shows semiconductor chips 6 of varying
sizes mounted on substrate 2 via external terminals (semiconductor balls) 3
of varying sizes.
III. ANALYSIS
Appellants contend "Egawa suggests that chips may be different
sizes" which "would result in spaces that are 'almost,' i.e., 'very nearly' and
'all but', the same due to a minor increase or decrease" (App. Br. 10).
According to Appellants, "[i]f the chips 17a, 17b are significantly different
sizes or have different sized bonds members 18, the device 10 would be
rendered inoperable by the underfill injection process," and thus, "a person
having ordinary skill in the art would be led away from differing connector
sizes upon reading Egawa" (id.).
Further, the Appellants contend "Watanabe's teachings relate to
external terminals of packages 6 ... , and not to flip-chip bond members 18
as taught in Egawa," and thus, "a person having ordinary skill in the art
would not be motivated to combine Egawa and Watanabe .. . "(id.).
According to Appellants, "the Examiner fails to provide a reason, e.g., a
motivation, to combine Egawa and Watanabe" (id.).
As an initial matter, we note that Appellants do not contend that the
combination of Egawa in view of Watanabe fails to disclose or suggest any
of the claimed limitations (id.). Instead, Appellants' contentions tum on "a
person having ordinary skill in the art would be led away from differing
connector sizes upon reading Egawa," and" ... would not be motivated to
combine Egawa and Watanabe .. . "(id.).
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We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's findings,
and find no error with the Examiner's conclusion that the claims would have
been obvious over the combined teachings.
The Examiner finds, and we agree, "Egawa teaches first die and
second die may be different in size and characteristics or may be the same"
(Final Act. 3). In particular, Egawa discloses bonding semiconductor chip
17 a (first die) to semiconductor chip 12 via first bond members, and bonding
semiconductor chip 1 7b (second die) to semiconductor chip 12 via second
bonding members (FF 1). Thus, we find no error with the Examiner's
reliance on Egawa for teaching and suggesting first and second "electrical
connectors," as recited in claim 1.
In Egawa, the semiconductor chips 17 a, 17b may be different in size
and the distance between the semiconductor chip 12 and the semiconductor
chips 17a, 17b range from 10 to 50 microns (FF 1). Further, under-fill resin
is injected through the space between the semiconductor chips 17a, 17b,
such that both the spaces (covering the first and second bonding members)
between the semiconductor chip 12 and the semiconductor chips 1 7 a, 1 7b
are filled with almost the same (i.e., not the same) amount of under-fill resin
(FF 2). That is, Egawa discloses, or at least suggests, semiconductor chips
17 a, 1 7b may vary in size wherein the spaces between the semiconductor
chip 12 covering first and second bonding members are almost (i.e., not
exactly) the same (id.).
Further, we find no error with the Examiner's finding "Watanabe
discloses a multi-chip module including a first die connected to a substrate
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... with first connectors and a second die connected to a substrate with
second connectors," wherein "the diameter of the first connectors is different
than the diameter of the second connectors" (Final Act. 3). In particular,
Watanabe discloses first and second semiconductor chips 6 of varying sizes
bonded to substrate 2 via semiconductor balls 3 of varying sizes (FF 3). We
find no error with the Examiner's reliance on Watanabe's first and second
semiconductor balls 3 (respectively bonding/connecting the first and second
semiconductor chips 6 to the substrate 2) for teaching and suggesting first
and second "electrical connectors," wherein "a size of one of the second
electrical connectors being smaller than a size of one of the first electrical
connectors" (claim 1 ).
We also find no error with the Examiner's conclusion that "[i]t would
have been obvious to one of ordinary skill in the art at the time of the
invention" to "modify the first die and associated first electrical connectors
and the second die and associated [second] electrical connectors of Egawa"
to "have the characteristics of the first die and associated first electrical
connectors and second die and associated second electrical connectors of
Watanabe" when "creating the multi-chip module" (Final Act. 3). As the
Examiner points out, and we agree, "Egawa uses the term 'almost' not
'exactly' which clearly allows for at least slight variations in connector size
in view of Watanabe" (Ans. 3).
Although Appellants contend "a person having ordinary skill in the art
would not be motivated to combine Egawa and Watanabe ... "(App. Br.
10), we also agree with the Examiner that both Egawa and Watanabe are
directed to the same field of endeavor of mounting a "multi-chip module"
(Ans. 3). Thus, we find no error with the Examiner's conclusion that one of
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ordinary skill in the art, upon reading Watanabe's teaching and suggestion of
using connectors (bonding/ connecting semiconductor balls) of varying sizes
for bonding/connecting semiconductor chips of varying sizes (FF 3), would
have found it obvious to modify Egawa's teaching and suggestion of first
and second semiconductor chips of varying size having the space
respectively therebetween (and thus bonding connectors therebetween) not
the same in size (FF 1-2), such that one of the connectors would be smaller
than the others.
Although Appellants contend "[i]f the chips 17a, 17b are significantly
different sizes or have different sized bonds members 18, the device 10
would be rendered inoperable by the underfill injection process" (App. Br.
10), Appellants appear to view the combination in a different perspective
than that of the Examiner. The issue here is not whether the skilled artisan
would have bodily incorporated the entire system of Watanabe into the
entire system of Egawa, to provide significantly different sized bonding
members to the bonding region of Watanabe. Rather, the issue is whether
the ordinarily skilled artisan, upon reading Egawa and Watanabe, would
have found it obvious to provide first and second "electrical connectors,"
such that the size of one electrical connector is smaller, even if
insignificantly or slightly smaller (i.e., almost the same size), than a size of
the others when connecting different sized semiconductor chips.
As the Examiner points out, Egawa "allows for at least slight
variations in connector size in view of Watanabe" (Ans. 3 (emphasis
added)). We agree with the Examiner that Egawa does not criticize,
discredit, or otherwise discourage providing a connector smaller than the
others. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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The Supreme Court guides that the conclusion of obviousness can be
based on the background knowledge possessed by a person having ordinary
skill in the art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Here, Appellants have presented no evidence that providing a connector
smaller than the other connectors would have been "uniquely challenging or
difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Instead, as the Examiner points out, "Appellant[s] even
admit[] ... that creating a multi-chip module 'may be a circumstance in
which the references might be combined'" (Ans. 5).
Thus, we conclude that it would have been well within the skill of one
skilled in the art to combine Watanabe's teachings with that of Egawa in the
same field of endeavor. We agree with the Examiner that "barring
unexpected results such changes in shape are a matter of choice which a
person of ordinary skill in the art would have found obvious absent
persuasive evidence that the particular configuration claimed is significant"
(Ans. 3). Such a substitution/design choice would have been well within the
skill of the art. See KSR, 550 U.S. at 417. That is, the skilled artisan is "[a]
person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421. We
agree with the Examiner that Appellants' invention is simply a modification
of familiar prior art teachings (as taught or suggested by the cited references)
that would have realized a predictable result (id.). Minor differences
between the prior art and a claimed device may be a matter of design choice
absent evidence to the contrary (see In re Rice, 341 F.2d 309, 314 (CCPA
1965)).
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Accordingly, Appellants have not shown the Examiner erred in
rejecting claim 1 and claim 11 falling therewith (App. Br. 11) over Egawa
and Watanabe. Appellants do not provide arguments for claims 2-9, 11-16,
and 21, and thus, we also affirm the rejections of: claims 2-5, 9, 11, 12, 15,
and 21 fall with claim 1 over Egawa and Watanabe; claims 6 and 13 over
Egawa, Watanabe, and Kiong; claims 7 and 14 over Egawa, Watanabe,
Chan, and Kiong; and claims 8 and 16 over Egawa, Watanabe, and Chan.
As for claim 17, Appellants contend that Tago fails to "teach" a
"metal pillar" (App. Br. 12-13) (emphasis added). In particular, Appellants
contend one of ordinary skill in the art "would not understand the wiring
patterns 23 of Tago to be a 'metal pillar' because Appellants' specification
distinguishes between a similar wiring pattern and a metal pillar" (id. at 12).
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However," ... limitations
are not to be read into the claims from the specification." In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
We note claim 17 does not define a "metal pillar." Further, we note
the portions of the Specification identified by Appellants (App. Br. 12) also
do not define a "metal pillar" but merely set forth non-limiting examples.
We agree with the Examiner that " ... it is improper to import claim
limitations from the specification" (Ans. 7).
Although Appellants also contend "Appellants' specification does not
recognize that a metal pillar includes a metallization component in a
substrate, a PPI, or similar wiring pattern" (App. Br. 12), nothing in the
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claims or the Specification precludes a "metal pillar" from encompassmg a
portion of wiring patterns.
Because the portions of the Specification referenced by Appellants
give only a non-limiting example of what it may be included by this
limitation (id.), given the broadest reasonable interpretation, we conclude
that a "metal pillar" is sufficiently broad enough to encompass a metallic
portion of wiring patterns. As the Examiner points out, "Appellant[ s are]
not using the word pillar any differently than from its plain meaning in the
specification" (Ans. 7). Thus, we agree with the Examiner's finding that
Tago teaches (or at least suggests) "[wiring patterns] 23 at least partially
comprises a metal pillar" (id.).
Although Appellants also repeat the argument that "person having
ordinary skill in the art would not be motivated to combine [the references]"
(App. Br. 13), again, we agree with the Examiner that the references are
from the same field of endeavor, wherein" ... barring unexpected results
such changes in shape are a matter of choice which a person of ordinary skill
in the art would have found obvious absent persuasive evidence that the
particular configuration claimed is significant" (Ans. 8).
Based on this record, we also affirm the Examiner's rejection of claim
17 and claim 20 falling therewith over Tago and Watanabe. Appellants do
not provide arguments for claims 18 and 19, and thus, we also affirm the
rejection of claim 18 over Tago, Watanabe, and Kiong; and of claim 19 over
Tago, Watanabe, Kiong, and Chan.
IV. DECISION
We affirm the Examiner's rejections of claims 1-9 and 11-21 under
35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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