Ex Parte Lee et al

Patent Trial and Appeal Board

Sep 25, 2017

12943732 (P.T.A.B. Sep. 25, 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.
12/943,732 11/10/2010 Eun-Sung LEE 15639-000100/US 4247
30593 7590 09/27/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
dcmailroom@hdp.com
pshaddin@hdp.com
j Castellano @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte EUN-SUNG LEE, SE-YUN KIM, and SANG-SOO JEE1
(Applicant: Samsung Electronics Co., LTD)
Appeal 2016-000562
Application 12/943,732
Technology Center 1700
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—11 and 27—37. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Samsung Electronics Co.,
LTD. App. Br. 2.
Appeal 2016-000562
Application 12/943,732
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A conductive paste comprising:
a conductive powder;
a metallic glass, the metallic glass including an alloy
having a disordered atomic structure that includes at least two
metals, the metallic glass including a glass transition
temperature (Tg) and a supercooled liquid region (SCL), the
metallic glass configured to be softened when heated above the
Tg of the metallic glass and below a crystallization temperature
(Tx) of the metallic glass; and
an organic vehicle.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Hicks US 4,434,084
Akimoto US 2009/0211626 A1
Lohwongwatana US 7,947,134 B2
THE REJECTIONS
1. Claims 1,31, and 36 are rejected under 35 USC
paragraph, as being indefinite.
2. Claims 1—9 and 27—37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hicks in view of Lohwongwatana.
3. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hicks in view of Lohwongwatana, and further in view of
Akimoto.
Feb. 28, 1984
Aug. 27, 2009
May 24, 2011
§112, second
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Application 12/943,732
ANALYSIS
We reverse each rejection for essentially the reasons provided by
Appellants in the record, and add the following for emphasis.
Rejection 1
The Examiner rejects claims 1,31 and 36 under 35USC§ 112,
second paragraph, as being indefinite regarding the phrase “metallic glass
configured to be softened when heated above the Tg of the metallic glass
and below a crystallization temperature (Tx) of the metallic glass”. The
Examiner states that the claims require a configuration for the metallic glass,
but does not specify the configuration, and the Specification does not
describe the configuration.
Appellants state, inter alia, that softening behavior of metallic glass is
well understood in the art. Appeal Br. 9-11. It is Appellants’ position that
the use of the words “configured to” within the context of the claims means
“having a property of’. Appeal Br. 11. In response, the Examiner states that
this interpretation would change the scope of the limitation because the term
“configured to” implies a structure or configuration in the metallic glass,
whereas the term “having a property of’ does not require a structure in the
metallic glass, but requires only the recited property. Ans. 5.
Use of the recitation “configured to” in claims requires a structure that
is more than just capable of performing a function, but is actually made to
perform the function. Aspex Eyewear, Inc. v. Marchon Eyewear, Inc. (Fed.
Cir. 2012). Typically, “configured to” language is found in device claims,
hence, the usage in the instant case is somewhat unorthodox, but this does
not make it indefinite. We can interpret the meaning of the claim as being
that the metallic glass is made to perform the recited function of being
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Application 12/943,732
softened when heated above the Tg of the metallic glass and below a
crystallization temperature (Tx) of the metallic glass. In this manner, the
claim is not indefinite, noting that, as explained by Appellants, the softening
behavior of metallic glass is understood in the art for the reasons provided
by Appellants in the record.
We thus reverse Rejection 1.
Rejections 2 and 32
It is the Examiner’s position that Hicks teaches a conductive paste
comprising conductive copper powder, tin solder powder, and an organic
vehicle, wherein the amount of copper powder is 70—95 % by weight, and
the amount of solder powder is 5—30 % by weight (col. 2,11. 33—68), but that
Hicks does not disclose that the solder powder is a metallic glass. Ans. 2—3.
The Examiner relies upon Lohwongwatana for teaching that metallic
glass solder has significant advantages over lead-based solder (col. 1,
line 44—col. 2, line 47; col. 3, lines 40-67), and that the advantages include
higher strength, low processing temperature, and better reliability (col. 3,
line 61—col. 4, line 5). Ans. 3.
The Examiner concludes that it would have been obvious “to combine
the metallic glass of Lohwongwatana with the conductive solder paste of
2 It is noted that Appellants point out that the Examiner’s position as set
forth in the Answer is different from the position as set forth in the Final
Office Action as illustrated in Appendix A attached with the Reply Brief.
Reply Br. 3^4. Appellants state that they elected not to reopen prosecution
(Reply Br. 4), but it is also noted that no petition was filed to designate the
Answer as containing a new ground. The issues are resolved in this case
based upon the Examiners’ stated position in the Answer.
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Application 12/943,732
Hicks in order to obtain a conductive paste which forms a bond having
improved strength and reliability”. Ans. 3—4.
Appellants argue that the Examiner’s reason for adding the metallic
glass of Lohwongwatana to the cathodic composition of Hicks’s (which is
“to obtain a conductive paste which forms a bond having improved strength
and reliability” (Ans. 3—4)) lacks factual support. Reply Br. 8.
Appellants argue that the Examiner refers to column 3, line 61
through line 5 of column 4 of Lohwongwatana3 (Ans. 3) in support of this
reasoning. Appellants argue that this specific disclosure of Lohwongwatana
relied upon by the Examiner does not support the assertion that metallic
glasses form higher-strength joints than conventional Pb-Sn solder. In this
regard, Appellants refer to column 1, line 67 through column 2, line 3 of
Lohwongwatana which discloses that “SAC4 solders are inferior to Pb-Sn
solder in terms of solderability (wetting, spreading and low melting) and
reliability. Each of these technical drawbacks can limit the effectiveness and
applicability of these materials.”
Upon review of Lohwongwatana in this regard, we observe that
Lohwongwatana is directed to methods and compositions for a novel metal-
to-metal or material-to-material joining technique using bulk metallic
3 The disclosure found therein (in Lohwongwatana) is:
[i]t has now been discovered that these properties allow the viscous
BMG liquid to be used as a low temperature replacement for
conventional joining materials, such as, for example, Pb-Sn and Sn-
based solders. More specifically, the current invention recognizes that
using bulk metallic glasses it is possible to join materials together at
low temperatures and with high reliability by maintaining specific
heating and cooling profiles for the BMG materials during the joining
process.
4 This refers to “Sn-Ag-Cu” solders.
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Application 12/943,732
glasses. Lohwongwatana, Abstract. A description of the specific alloys
useful according to the invention of Lohwongwatana is found at col. 8,
1. 56—col. 17,1. 44. Examples are set forth at columns 17—19 of
Lohwongwatana.
Lohwongwatana teaches that lead (Pb) is known as a toxic substance
and therefore there has been an effort to replace Pb/Sn solder with lead-free
alternatives such as Sn-Ag-Cu (SAC) alloys. Lohwongwatana, col. 1,11. 21—
67. Lohwongwatana teaches that SAC solders are inferior to Pb-Sn solder in
terms of solderability (wetting, spreading and low melting) and reliability,
and that these technical drawbacks limit the effectiveness and applicability
of these materials.5 Lohwongwatana, col. 1,1. 67—col. 2,1. 4.
Thus, Lohwongwatana uses bulk metallic glasses, and the method
relies on the superior mechanical properties of bulk metallic glasses and/or
softening behavior of metallic glasses in the undercooled liquid region of
temperature-time process space, which enables joining of a variety of
materials at a much lower temperature than typical ranges used for
soldering, brazing or welding. Lohwongwatana, col. 3,11. 40-52.
Lohwongwatana teaches that BMGs can be processed like plastics or
conventional silicate glasses when heated above their glass transition
temperature (Tg). Lohwongwatana, col. 3,11. 61—64. Lohwongwatana
5 Lor example, higher processing temperatures create a serious problem in a
system with multiple joining processes, such as flip-chip packaging. The
temperature of the last reflow process dictates the temperature of prior
reflow processes. Specifically, in the case of electronics, replacing the
traditional Pb-Sn solder with Sn-Ag raises the soldering temperature from
180 °C to 215—250 °C. This in turn elevates the required melting
temperature of prior reflow processes to above the 300 °C range to avoid
subsequent remelting. Lohwongwatana, col. 2,11. 4—17.
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Application 12/943,732
teaches that certain BMG properties allow the viscous BMG liquid to be
used as a low temperature replacement for conventional joining materials,
such as, for example, Pb-Sn and Sn-based solders. Lohwongwatana, col. 3,
11. 64—67. Lohwongwatana discloses that when using bulk metallic glasses,
it is possible to join materials together at low temperatures and with high
reliability by maintaining specific heating and cooling profiles for the BMG
materials during the joining process. Lohwongwatana, col. 3,1. 64—col. 4,
1. 5.
In view of the above, a fair understanding of Lohwongwatana’s
teachings is that Lohwongwatana’s contribution to the art is a joining
technique involving BMGs as a viable lead-free alternative to Pb/Sn
soldering techniques. Lohwongwatana’s use of bulk metallic glasses makes
it possible to join materials together at low temperatures and with high
reliability by maintaining specific heating and cooling profiles for the BMG
materials during the joining process. However, it is not to say, as the
Examiner states, that Lohwongwatana supports the conclusion that that the
proposed modification of Hicks results in “a conductive paste which forms a
bond having improved strength and reliability.” While Lohwongwatana
provides a viable, lead-free alternative to Pb/Sn soldering techniques, it
cannot be said that the bond has improved strength and reliability as
compared to Hicks’s Sn/Pb-containing metal composition.
Furthermore, as Appellants point out (Reply Br. 6), Lohwongwatana
teaches to replace lead-based solder with a viable, lead-free alternative,
rather than to combine this alternative with Pb/Sn soldering techniques (as
proposed by the Examiner in the rejection). Appellants therefore submit,
and we agree, that the proposal to combine Hicks’s Pb/Sn-based metal
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Application 12/943,732
composition with a lead-free alternative is not suggested by the teachings of
the applied art.
Furthermore, as Appellants point out (Appeal Br. 21 and Reply Br.
14), the proposed combination lacks support of a rationale underpinning
based on lowering the processing temperature (contrary to the Examiner’s
position as set forth on page 9 of the Answer). “[Rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” 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)). In the instant case, Appellants convincingly explain that Hicks’s
method requires the composition to be heated to at least 220 °C (Hicks col.
2,11. 19—24), while Lohwongwatana’s process conditions involve specific
lower temperature parameters because of the use of BMG’s
(Lohwongwatana, col. 6,11. 2—8), for example, 160—170 °C
(Lohwongwatana, col. 6,11. 28—30).6 Appeal Br. 21 and Reply Br. 14. As
such, we agree with Appellants that one would not want to lower the
6 As shown in Figure 4 of Lohwongwatana, under the thermoplastic joining
process, the BMG is heated to a temperature between the BMG material's
glass transition (Tg) and crystallization (Tx) temperatures. At this
temperature, the BMG becomes a supercooled liquid. Because of the unique
rheological properties of these BMGs, wetting may take place in this
supercooled liquid state as opposed to a molten state (above Tm) as would
be required with a conventional solder material (see Figure. 5). Supercooled
liquids, depending on their fragility, can have enough fluidity to spread
under minor pressure. The fluidity of supercooled liquids of bulk metallic
glasses is on par with thermoplastics during plastic injection molding. As a
result, BMGs under these thermoplastic conditions can be used as a
thermoplastic joining material. Lohwongwatana, col. 5,11. 25—38.
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Application 12/943,732
processing temperate of Hicks’s paste because of the requirement of heating
it to at least 220 °C. Reply Br. 14.
In view of the aforementioned collective arguments presented in the
record by Appellants, as highlighted above, we reverse Rejections 2 and 3.7
DECISION
Each rejection is reversed.
REVERSED
7 While we have fully reviewed the record, we need not address certain other
aspects of the record (pertaining to the submitted Declarations and the
articles listed in Appendix B) in making our determinations herein.
9