Ex Parte Leal

Patent Trials and Appeals Board

Mar 1, 2019

14276262 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/276,262 05/13/2014
114905 7590 03/05/2019
NXP-Davidson Sheehan
6501 William Cannon Drive West
Austin, TX 78735
FIRST NAMED INVENTOR
George R. Leal
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.
1080-DN30890TK 1085
EXAMINER
ZAKARIA, AKM
ART UNIT PAPER NUMBER
2868
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE R. LEAL
Appeal2018-004154
Application 14/276,262
Technology Center 2800
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
May 13, 2014 ("Spec."); Final Office Action dated May 20, 2016 ("Final");
Appeal Brief filed July 21, 2017 ("Appeal Br.") and Claims Appendix filed Sept.
20, 2017; Examiner's Answer dated Jan. 11, 2018 ("Ans."); and Reply Brief filed
Mar. 12, 2018 ("Reply Br.").
Appeal 2018-004154
Application 14/276,262
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
The invention relates to integrated circuit (IC) package testing. Spec. ,r 1.
The inventive IC device implements a die that is capable of operating in two
different modes: a production mode wherein the IC operates according to its
production design and function; and a test mode wherein the die reconfigures the
connections between certain die pads to form pad-to-pad links that, in conjunction
with links formed between pads on the substrate, form a stitch chain that routes
back and forth between the die and substrate through the die-substrate
interconnects, thereby facilitating board level reliability (BLR) testing of the die-
level interconnects of the IC device. Id. ,r 10. Independent claim 9 is representative
of the appealed claims, and is reproduced below.
9. A method comprising:
electrically isolating a set of pads of a die and which are located at a
periphery of [[a]] the die from corresponding busses of the die
by rendering non-conductive each fuse element of a first set of
fuse elements of the die, the first set of fuse elements coupling
the sets of pads to the respective busses;
electrically coupling subsets of pads of the set of pads by rendering
conductive each fuse element of a second set of fuse elements
of the die, the second set of fuse elements coupling the pads of
each subset;
bonding the die to a substrate to form an integrated circuit (IC) device,
the substrate having one or more interconnects coupling
corresponding pairs of subsets of pads to the die so as to
2 The Appellant is the Applicant, Freescale Semiconductor, Inc. Application Data
Sheet, filed May 13, 2014. The Appellant identifies the real party in interest as
NXP USA, Inc. Appeal Br. 1.
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Appeal 2018-004154
Application 14/276,262
electrically connect the set of pads into an electrically
continuous chain that stitches between the die and the
substrate; and
testing the IC device by monitoring a resistance across the chain.
Appeal Br. 23, Claims Appendix (emphases added). Independent claim 1 recites
"[a]n integrated circuit (IC) die" and independent claim 17 recites "[a]n integrated
circuit (IC) device comprising: a die ... and a substrate bonded to the die." Id. at
23-25.
The Examiner relies on the following references as evidence of
unpatentability:
Nathan
Cowles
Bemanian
Leal
us 5,813,881
US 2009/0224242 Al
US 2010/0283085 Al
US 2013/0020674 Al
The claims stand finally rejected as follows:
Sept. 29, 1998
Sept. 10, 2009
Nov. 11, 2010
Jan.24,2013
1. claims 1, 4, 5, 9-11, 14, 15, and 17 under 35 U.S.C. § I02(a)(l) as
anticipated by Nathan;
2. claims 2, 12, and 18 under 35 U.S.C. § 103 as unpatentable over
Nathan in view of Leal;
3. claims 3, 13, and 19 under 35 U.S.C. § 103 as unpatentable over
Nathan in view of Bemanian;
4. claims 6, 8, 16, and 20 under 35 U.S.C. § 103 as unpatentable over
Nathan in view of Cowles; and
5. claim 7 under 35 U.S.C. § 103 as unpatentable over Nathan in view of
Cowles and further in view of Bemanian.
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Appeal 2018-004154
Application 14/276,262
Rejections of claims 1-5 and 8 (Grounds 1-4)
The Appellant does not present arguments in support of patentability of
independent claim 1 and its dependent claims 2-5 and 8. See generally, Appeal Br.
3-20. Accordingly, we summarily sustain the rejections of these claims. See
above-listed grounds 1--4. We note that in response to the Final Office Action, the
Appellant filed an Amendment on July 8, 2016, cancelling claims 1-5 and 8, and
redrafting claim 6 in independent form to include the limitations of claim 1.
Although the question whether the Examiner properly refused to enter an
amendment is outside our jurisdiction, the proposed amendment to claim 6 added
nothing more than the limitations recited in claim 1 from which it directly depends,
and, therefore, it is unclear why the Examiner refused entry on the basis that
"[i]ndependent claim(s) 1 have been amended that will require new search and
consideration." Advisory Action dated August 5, 2016, 2; see Amendment 6
("[C]laim 6 has been rewritten in independent form and claims 1-5 and 8 have
been canceled without prejudice or disclaimer. The amendments to the claims do
not alter the scope of the pending claims and thus do not require any additional
search or consideration by the Office.").
Rejection of claims 9-11, 14, 15, and 17 under 35 US.C. § 102(a)(l) (Ground 1)
As to independent claim 9, the Appellant argues the Examiner reversibly
erred in finding that Nathan discloses: (1) "electrically isolating a set of pads of a
die ... from corresponding busses of the die," and (2) "[a] substrate having one or
more interconnects coupling corresponding pairs of subsets of pads to the die so as
to electrically connect the set of pads into an electrically-continuous chain that
stitches between the die and the substrate" (claim 9). Appeal Br. 4--7. More
specifically, the Appellant argues that the Examiner erred in finding the claim 9
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Appeal 2018-004154
Application 14/276,262
limitation "a set of pads of a die" reads on Nathan's pads 1-7 and that the claim 9
limitation "corresponding busses of the die" reads on metal traces 28A8T, 28A6T,
in Figures 2I-21. Id.; see Final 6-7. The Appellant contends Nathan's pads 1-7 and
metal traces 28A8T, 28A6T are pads and metal traces of printed circuit board
(PCB) 28, rather than pads and metal traces of dies 28B, 28C. Appeal Br. 4--5
(citing Nathan Figs. 2I-21, 15:61-16:4). The Appellant presents similar arguments
in support of patentability of independent claim 17, which recites "a die
comprising: a set of pads ... ; a set ofbusses; [and] non-conductive fuse
elements." Id. at 8-10.
The Appellant's arguments are persuasive. The Specification explicitly
distinguishes between pads on the die, on the substrate, and on the printed circuit
board (PCB). See, e.g., Spec. ,r 15. The Specification also describes the fuses and
power busses as being formed on the die layers. See id. ,r,r 18-19, 24. Nathan
describes traces 28Al T to 28A8T and fuse matrix 29A as part of first inner layer
28Ll of PCB 28. Nathan 16:9-14. Nathan discloses that die 28B is mounted on
upper-most surface 28U of PCB 28, and that fuse matrix 29A is covered by die
28B. Id. at 16:1--4, 15-18. The Examiner has not explained with sufficient clarity
how the claim 9 and claim 1 7 limitations relating to pads, fuse elements and busses
of the die are met by Nathan's pads, fuse elements and busses that are formed on
layers of the PCB. See generally, Ans. 3-14; compare id. at 11 ("[A]s is evident
and best understood from the figure in 21 said both fuses are located right on the
dies (28B-C) and hence, belong to the dies 28B-C." (emphasis omitted)), with
Nathan 6:3-5, 16:5-7 ("FIG. 21 is an illustrative composite of the traces and fuses
on first inner layer 28Ll (FIG. 2K) and second inner layer 28L2 (FIG. 2L)" of PCB
28.).
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Appeal 2018-004154
Application 14/276,262
Because the Appellant has identified reversible error in the Examiner's
findings that independent claims 9 and 1 7 are anticipated by Nathan, we do not
sustain the rejection as to these claims, nor do we sustain the rejection as to claims
10, 11, 14, and 15, which depend from claim 9.
Rejections of claims 12, 13, 16, and 18-20 under 35 US. C. § 103 (Grounds 2-4)
The Examiner's rejections of dependent claims 12, 13, 16, and 18-20 are
based on the same, unsupported findings of fact discussed above in connection
with the rejection of independent claims 9 and 17. See Final 11-13, 17-19.
Accordingly, we do not sustain the rejections of claims 12, 13, 16, and 18-20.
Rejections of claims 6 and 7 under 35 USC§ 103 (Grounds 4-5)
Claim 6 depends from independent claim 1, and claim 7 depends from claim
6. As noted above, the preamble of claim 1 recites "[a]n integrated circuit (IC) die
comprising." Appeal Br. 22 (Claims Appendix). The body of claim 1 includes the
limitation "a set of pads at a periphery of a top metal layer," but the term "die"
does not appear in the body of claim 1. Id. Claim 6 recites "[t]he IC die of claim 1,
wherein ... the die further comprises: an activation pad at the top metal layer." Id.
( emphasis added). Because the body of claim 6 depends on the recitation of a "die"
in the preamble for antecedent basis, we determine that the preamble is limiting
and that the "top metal layer" recited in claims 1 and 6 refers to the top metal layer
of the die. See Pacing Techs, LLC v. Garmin Intern., Inc., 778 F.3d 1021, 1024
(Fed. Cir. 2015) ("Because the preamble terms 'user' and 'repetititive motion
pacing system' provide antecedent basis for and are necessary to understand
positive limitations in the body of claims in the '843 patent, we hold that the
preamble to claim 25 is limiting."); Catalina Mktg. Int 'l, Inc. v. Coo/savings.com,
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Appeal 2018-004154
Application 14/276,262
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ("[D]ependence on a particular disputed
preamble phrase for antecedent basis may limit claim scope because it indicates a
reliance on both the preamble and claim body to define the claimed invention."
( citation omitted)).
The Examiner relies on Nathan's uppermost layer 24U of PCB 24 and pads
26A(l-20) (or pads 26B(l-20)) for a teaching of a top metal layer having a set of
pads at a periphery thereof as recited in claim 1. Final 5. Because we determine the
preamble limits the scope of claim 1 and, thus, the claim 1 phrase "a set of pads at
a periphery of a top metal layer" refers to a set of pads at a periphery of the die 's
top metal layer, we conclude the Examiner reversibly erred in finding Nathan
discloses this feature. The Examiner's citations to the secondary references relied
on in rejecting claims 6 and 7 do not cure the deficiencies in the Examiner's
rejection of claim 1. See Final 15-16, 20-21. Accordingly, we do not sustain the
rejections of claims 6 and 7.
CONCLUSION
1, 4, 5, 9- § 102(a)(l) Nathan 1, 4, and 5 9-11, 14, 15, and
11, 14, 15, 17
and 17
2, 12,and § 103 Na than and Leal 2 12 and 18
18
3, 13,and § 103 Nathan and 3 13 and 19
19 Bemanian
6, 8, 16, § 103 Nathan and 8 6, 16, and 20
and20 Cowles
7 § 103 Nathan, Cowles, 7
and Bemanian
Summar 1-5 and 8 6, 7, and 9-20
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Appeal 2018-004154
Application 14/276,262
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-IN-PART
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