Ex Parte Kang et alDownload PDFPatent Trial and Appeal BoardJul 31, 201311657000 (P.T.A.B. Jul. 31, 2013) Copy Citation 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. 11/657,000 01/23/2007 Sung Kwon Kang YOR920030273US1 (01400.00 2966 7590 08/01/2013 The Law Offices of Robert J. Eichelburg HODAFEL Building, Suite 200 196 Acton Road Annapolis, MD 21403 EXAMINER SNOW, COLLEEN ERIN ART UNIT PAPER NUMBER 2813 MAIL DATE DELIVERY MODE 08/01/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUNG KWON KANG, DA-YUAN SHIH, and YOON-CHUL SON1 ____________ Appeal 2011-006367 Application 11/657,0002 Technology Center 2800 ____________ Before BRIAN J. McNAMARA, SCOTT E. KAMHOLZ, and JAMES B. ARPIN, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claim 15. Claims 1-14 are cancelled. App. Br. 2.3 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 International Business Machines Corporation is the real party-in-interest. 2 This application is a parent application to U.S. Patent Application No. 12/173,803 that currently is under appeal, i.e., Appeal No. 2011-008660, before this same panel of the Board. Appeal 2011-006367 Application 11/657,000 2 INVENTION Appellants’ invention relates to processes for inhibiting intermetallic inclusions in the fabrication of integrated circuit interconnection structures. See generally Spec. 1:7-10. In particular, such processes comprise providing stacked layers on the integrated circuit comprising a first layer of electroless nickel-phosphorus (Ni(P)), a second layer of tin (Sn) or copper (Cu), and a third layer of a Sn rich, lead (Pb) free solder. Id. at 4:1-4; 7:18-22. The layers then are heated to fuse them together. Id. at Figs. 5, 6. Claim 15 is reproduced below with line breaks and spacing added for clarity: 15. A process for inhibiting intermetallic inclusions in the fabrication of integrated circuit interconnection structures, comprising providing stacked layers on said integrated circuit comprising as a first layer an electroless Ni(P) coating, and as a second layer, a metal selected from Sn or Cu, and as a third layer, a Sn rich Pb-free solder and subjecting said stacked layers to a fusion temperature excursion to fuse said stacked layers together and wherein said second layer ranges in thickness from 0.1 to 5.0 microns and said third layer is a material from the group Sn, Sn- 3.5%Ag, Sn-0.7%Cu, Sn-3%Bi, Sn-3.5%-0.7%Cu, Sn-3.5%Ag- 3%Bi, Sn-8%- Zn-3%Bi, Sn-3.5%Ag-0.7%Cu-0.5%Sb, Sn- 2.5%Ag-0.5%Cu. The Examiner relies on the following as evidence of unpatentability: 3 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed July 20, 2010; (2) the Examiner’s Answer (Ans.) mailed November 22, 2010; and (3) the Reply Brief (Reply Br.) filed December 22, 2010. Appeal 2011-006367 Application 11/657,000 3 Sakuyama Copeland Kim US 2003/0096494 A1 US 6,596,621 B1 US 6,716,738 B2 May 22, 2003 July 22, 2003 Apr. 6, 2004 THE REJECTION The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as unpatentable over Sakuyama, Copeland, and Kim. Ans. 3-5. OBVIOUSNESS REJECTION OVER SAKUYAMA, COPELAND, AND KIM Regarding claim 15, the Examiner finds that Sakuyama discloses all of the limitations of the claimed processes, except that Sakuyama does not disclose that the second layer is selected from Sn or Cu, that the second layer has a thickness in a range of 0.1 to 5.0 microns, or that the third layer is one of the compositions specified in the claim. Ans. 3-4. Nevertheless, the Examiner finds that Copeland discloses a solder preparation in which the second layer is Cu and may have a thickness of 0.3 microns, i.e., within the range recited in claim 15. Id. at 4. Further, the Examiner finds that Kim discloses a Sn-3.5%Ag solder, which is among those recited in claim 15. Id. at 4-5. Moreover, the Examiner concludes that a person of ordinary skill in the relevant art would have reason to modify the teachings of Sakuyama in view of those of Copeland and Kim to achieve the processes recited in claim 15. Id. Appellants argue that the combined references fail to teach or suggest all of the limitations of processes, as recited in claim 15, and that the Examiner fails to demonstrate that a person of ordinary skill in the relevant Appeal 2011-006367 Application 11/657,000 4 art would have reason to combine the teachings of Sakuyama, Copeland, and Kim to achieve the processes recited in claim 15. App. Br. 3-13. ISSUES (1) Under § 103(a), has the Examiner erred by finding that Sakuyama, Copeland, and Kim, collectively, teach or suggest “a second layer, a metal selected from Sn or Cu,” as recited in claim 15? (2) Is the Examiner’s combination of the teachings of these references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? ANALYSIS We agree with the Examiner’s findings that Sakuyama discloses all of the limitations of claim 15, except for the composition and thickness of the second layer. Instead, Sakuyama discloses a second layer of gold (Au) or palladium (Pd). Sakuyama ¶ [0053]. With regard to the second layer, the Examiner finds that Copeland discloses a first layer of Ni, a second layer of Cu, and a third layer of Sn or silver (Ag). Ans. 4 (citing Copeland, col. 2, ll. 32-47). Copeland explains that “depositing the Cu layer prior to the Sn/Ag layer (or separate Sn and Ag layers) enhances the protection of the Ni barrier layer during solder reflow.” Copeland, col. 5, ll. 1-3 (emphasis added); see Ans. 4. The Examiner concludes that a person of ordinary skill in the art would have had reason to replace Sakuyama’s Au or Pd layer with Copeland’s Cu layer in order to obtain the benefits of a Cu layer that Copeland identifies. Ans. 5. The Examiner acknowledges that the disclosure cited in Copeland addresses the benefits of protecting a Ni layer, not the Ni(P) layer claimed. See Ans. 6. The Examiner instead contends that “there is no reason to Appeal 2011-006367 Application 11/657,000 5 believe, nor do the Appellants appear to be asserting, that the presence of phosphorus in the nickel layer would negate the beneficial effects of the Cu material as disclosed by [Copeland].” Id. Appellants argue that the Examiner has not shown that Copeland’s suggestion of employing Cu as the second layer is relevant to the claimed subject matter, because the benefits that the Cu layer supposedly provides relate to a Ni layer, not a Ni(P) layer. App. Br. 7-8; Reply Br. 2-4. In particular, Appellants argue that the Examiner has placed the burden improperly on Appellants to show that Copeland is irrelevant to the claimed subject matter. Reply Br. 4. We agree with Appellants on this point. Although the Examiner correctly found that Copeland discloses a Cu layer, such as that recited in claim 15, we are not persuaded that the Examiner has demonstrated that a person of ordinary skill in the art would have a reason to combine the teachings of Sakuyama and Copeland in the manner proposed by the Examiner to achieve the claimed invention. In rejecting a claim under § 103(a), the Examiner must establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that § 103(a) leads to three basic factual inquiries: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art). Further, the Examiner’s obviousness rejection must be based on “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” . . . . [H]owever, the analysis need not seek out precise teachings directed to the Appeal 2011-006367 Application 11/657,000 6 specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). If the Examiner’s burden is met, the burden then shifts to the appellant to overcome the prima facie case with argument and/or evidence. Obviousness then is determined on the basis of the evidence as a whole and/or the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner’s contention that “there is no reason to believe . . . that the presence of phosphorus in the nickel layer would negate the beneficial effects of the Cu” is unsupported by objective findings of fact and is, therefore, an inadequate rational underpinning to justify the Examiner’s obviousness conclusion. Instead, the Examiner must make the appropriate factual determinations in the support of the obviousness rejection. As Appellants explain in their Specification, the Ni will combine chemically with the P under the claimed reaction conditions. Spec. 2:7-27. Thus, the P is chemically active, and its presence reasonably may be expected to affect how the Cu interacts with the Ni, absent evidence to the contrary. Consequently, it is not at all clear from the record before us that the presence of P in the Ni(P) is so insignificant as to have no effect on the benefits from using Cu as the second layer. The Examiner may not rely on a lack of evidence that Copeland’s Cu layer would not achieve the same or similar benefits when applied to a Ni(P) layer or a Ni layer, as a rationale for replacing Sakuyama’s Au or Pd layer Appeal 2011-006367 Application 11/657,000 7 with Copeland’s Cu layer. Ans. 6; see also Reply Br. 4. Therefore, we conclude that the Examiner’s combination of the teachings of the Sakuyama and Copeland is not supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion and that the Examiner has failed to establish a prima facie case for obviousness. For the foregoing reason, we are persuaded of error in the rejection of independent claim 15. Therefore, we do not sustain the rejection of claim 15. CONCLUSION The Examiner erred in rejecting claim 15 under § 103(a). DECISION The Examiner’s decision rejecting claim 15 is reversed. REVERSED pgc Copy with citationCopy as parenthetical citation