Ex Parte Luo et al

Board of Patent Appeals and Interferences

Jun 12, 2009

10732181 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEESHAWN LUO, ANUP BHALLA, SIK K. LUI,
YUEH-SE HO, MIKE F. CHANG, and XIAO TIAN ZHANG
____________

Appeal 2009-000991
Application 10/732,181
Technology Center 2800
____________

Decided:1 June 12, 2009
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000991
Application 10/732,181

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-20 and 22-26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed July 16, 2007), the Answer (mailed
October 19, 2007), and the Reply Brief (filed December 27, 2007) for the
respective details. Only those arguments actually made by Appellants have
been considered in this decision. Arguments which Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived [see 37 C.F.R. § 41.37(c)(1)(vii)].

Appellants’ Invention
Appellants’ invention relates to a semiconductor package in which the
external leads of the semiconductor package are arranged in an inverted “J”
lead configuration. According to Appellants, the inverted “J” lead
configuration provides, inter alia, a minimization of circuit board space,
increased die size, reduced package height and improved thermal resistance
properties. (See generally Spec. ¶¶ [0015]-[0016]).

Claim 1 is illustrative of the invention and reads as follows:

1. A semiconductor package comprising:
a lead frame having a plurality of leads and a lead frame pad, the lead
Appeal 2009-000991
Application 10/732,181

3
frame pad including a die coupled thereto, at least one of the plurality of
leads having an upwardly extending external portion forming an acute angle
relative to a bottom surface of the package;
metal connectors connecting the die to the plurality of leads; and
a resin body encapsulating the die, metal connectors and a portion of
the lead frame excluding the external portion of the at least one of the
plurality of leads, the upwardly extending portion of the at least one of the
plurality of leads extending along and terminating at a side portion of the
resin body adjacent the bottom surface of the package.

The Examiner’s Rejection

The Examiner relies on the following prior art to show
unpatentability:
Ishii US 5,835,988 Nov. 10, 1998
Appellants’ Admitted Prior Art (AAPA) – the disclosure associated with the
illustrations identified as “prior art” in Figures 1-4 of the drawings.

Claims 1-20 and 22-26, all of the appealed claims, stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over AAPA in view of Ishii.

ISSUES
The pivotal issues before us are whether Appellants have
demonstrated that the Examiner erred in
Appeal 2009-000991
Application 10/732,181

4
(i) determining the obviousness to the skilled artisan of modifying
the disclosure of Ishii to terminate the leads at the side surface of the resin
body instead of the upper surface as disclosed by Ishii and,
(ii) if so, whether the combination of Ishii with AAPA satisfies all
of the claimed limitations.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Appellants’ admitted prior art (AAPA), as illustrated in Figures
1-4 of the Appellants’ drawings and described at paragraphs [0004]-[008] of
the Specification, discloses a conventional semiconductor package.
Included in the prior art package are a lead frame 7, a plurality of leads 11,
18, and 26, a lead frame pad 10 including a coupled die 8, metal connectors
6, and a resin body 2 encapsulating the die.
2. The prior art semiconductor package of AAPA is also disclosed
in paragraph [0009] as having the leads 11 and 18 formed in a conventional
“J” configuration with the leads extending downwardly and terminating
below the bottom surface of the resin body 2.
3. Ishii discloses (Figs. 1, 6, 7, 8, 10b) a semiconductor package
having leads 4b extending upwardly and terminating at the upper surface of
resin body 5b, 5c.
4. Ishii discloses (col. 5, ll. 1-11) that the described semiconductor
package configuration provides the effects of (1) reduced thickness of the
semiconductor device, (2) improved heat radiation from the exposed die, and
Appeal 2009-000991
Application 10/732,181

5
(3) the facilitating of stacking of the semiconductor devices through the
termination of the leads on the upper surface of the resin body.
5. Ishii also discloses (Fig. 6, col. 5, l. 31, Fig. 7, col. 5, l. 67, Fig.
8, col. 6, l. 25, Fig. 9, col. 6, l. 46, Fig. 10b, col. 7, l. 4) various
semiconductor package embodiments in which the upper surface lead
termination that facilitates stacking (effect (3)) is disclosed as being
common to all of those embodiments.
6. The Figure 6 embodiment of Ishii, depicting an unstacked die
package with the leads 4b terminating at the upper surface of the resin body,
provides the disclosed advantage (col. 5, ll. 30-39) of preventing the leads
from curving outwardly of the resin body.

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to 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). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“there must be 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 specific subject matter of the challenged claim,
Appeal 2009-000991
Application 10/732,181

6
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)).

ANALYSIS

With respect to the Examiner’s obviousness rejection of appealed
independent claims 1, 20, and 26 based on the combination of AAPA and
Ishii, Appellants’ arguments in response assert a failure by the Examiner to
establish a prima facie case of obviousness since all of the claimed
limitations are not taught or suggested by the applied prior art references. In
particular, Appellants’ arguments focus (App. Br. 12-14; Reply Br. 14, 15,
17, and 18) on the alleged deficiency of Ishii in disclosing the claimed
feature, present in each of the independent claims 1, 20, and 26, of
terminating the upwardly extending portion of at least one of the leads of the
lead frame at a side surface portion of the resin body that encapsulates the
die. According to Appellants (id.), since Ishii discloses (Figs. 1, 6, and 7)
the termination of the leads 4b only on the upper surface of the
encapsulating resin body 5b, any combination of Ishii with the structure of
AAPA would not result in the semiconductor package structure as claimed.
We agree with Appellants. The Examiner correctly recognizes that
Ishii has no disclosure of terminating the leads 4b anywhere except on the
upper surface of the resin body 5b. The Examiner, nonetheless, takes the
position (Ans. 10) that Ishii’s leads 4b are disclosed as terminating on the
upper surface of the resin body 5b only to allow for the stacking of the
Appeal 2009-000991
Application 10/732,181

7
semiconductor package. According to the Examiner (id.), if the ordinarily
skilled artisan chose not to use the stacking feature of Ishii, the leads 4b
would then be terminated, not at the resin body upper surface, but, rather at
the side surface portion of the resin body 5b as presently claimed.
As argued by Appellants (Reply Br. 14), however, Ishii has no
disclosure (e.g., col. 2, l. 40, col. 3, ll. 17-20, and col. 5, ll. 7-12) of any
semiconductor package that is not intended to be implemented in a stacked
structure configuration. This is verified by the disclosure of Ishii (see FF 4)
which lists as “effect (3),” the termination of the leads 4b on the upper
surface of the resin body 5b enabling stacking of the semiconductor devices.
It is noteworthy that, while Ishii discloses several differing resin body
packing embodiments, the upper surface lead termination (effect (3)) is
disclosed as being common to all of those embodiments (see FF 5). With
this in mind, it is apparent that any conclusion that an ordinarily skilled
artisan, not using Ishii’s stacking feature, would choose to terminate leads 4b
anywhere except on the disclosed upper surface of the resin body 5b can
only be based on unwarranted speculation on the part of the Examiner.
It is further noteworthy that, although Ishii has no disclosure of any
intended implementation of the semiconductor package structure other than
in a stacked configuration, when Ishii does depict the resin encapsulated die
packages in an unstacked configuration, the leads are still depicted as
terminating on the upper surface of the resin body in all instances. In one
particular instance, also alluded to by Appellants (Reply Br. 14), the Figure
6 embodiment of Ishii, which depicts an unstacked die package, nonetheless
shows the leads 4b terminating at the upper surface of the resin body
Appeal 2009-000991
Application 10/732,181

8
providing the disclosed advantage (see FF 6) of preventing the leads from
curving outwardly of the resin body.
Further, in view of the above discussion, we find that even assuming,
arguendo, that the Examiner provided a proper basis for combining the
disclosures of AAPA and Ishii, the resulting combination would not satisfy
the claimed features present in each of the appealed independent claims 1,
20, and 26. We, therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1, 20, and 26, nor of claims 2-19 and 22-25
dependent thereon.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown the Examiner erred in rejecting claims 1-20 and 22-
26 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-20 and 22-
26, all of the appealed claims, is reversed.

REVERSED
KIS

SCHEIN & CAI, L.L.P.
James Cai
111 W. ST. JOHN ST.
SUITE 1250
SAN JOSE, CA 95113