Ex Parte Ma et al

Patent Trial and Appeal Board

Mar 4, 2015

12653722 (P.T.A.B. Mar. 4, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QING MA, CHUAN HU, and PATRICK MORROW
1

____________

Appeal 2013-004069
Application 12/653,722
Technology Center 2800
____________

Before CHUNG K. PAK, JAMES C. HOUSEL, and N. WHITNEY WILSON,
Administrative Patent Judges.

PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal
2
under 35 U.S.C. § 134(a) from the
Examiner’s decision
3
finally rejecting claims 1‒9, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
The subject matter on appeal is directed to “a substrate having a multi-layer
glass core” for integrated circuit devices. Spec. 2, ¶ [0002]. The term “glass,”

1
The real party in interest is said to be Intel Corporation, 2200 Mission College
Blvd., Santa Clara, CA 95054-1549. Appeal Brief filed September 21, 2012
(“App. Br.”) at 3.
2
App. Br. 5.
3
Final Action mailed April 17, 2012 (“Final Act.”) at 2‒8 and the Examiner’s
Answer mailed October 18, 2012 (“Ans.”) at 3‒5.
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according to the Specification, “refers to an amorphous solid” and “does not refer
to organic polymer materials, which may be amorphous in solid form.” Spec. 6‒7,
¶¶ [0028] and [0029]. “Examples of glass materials that may be used with the
described embodiments include pure silica…, soda lime glass, boro-silicate glass,
and alumo-silicate glass.” Spec. 6, ¶ [0028].
The substrate may be used with an integrated circuit die and a next level
component, such as a motherboard, mainboard, other circuit board. Spec. 2, ¶
[0003]. The substrate, for example, may be mechanically and electrically coupled
to an integrated circuit die on its one side and may have terminals, such as array
pins, pads, lands, columns, and bumps, on the opposing side to form electrical
connections with a next level component, such as a circuit board. Spec. 2‒3, ¶¶
[0003] and [0004].
Details of the appealed subject matter are recited in illustrative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief:
1. A substrate comprising:
a core including of a number of discrete amorphous solid glass
layers, the core having a first surface and an opposing second surface;
a number of conductors extending through the core from the
first surface to the second surface;
at least one dielectric layer and at least one metal layer disposed
at the first surface of the core, wherein the at least one metal layer at
the first surface is electrically coupled with at least one of the
conductors; [and]
at least one dielectric layer and a least one metal layer disposed
at the second surface of the core, wherein the at least one metal layer
at the second surface is electrically coupled with at least one of the
conductors.
App. Br. 15 (emphasis added).
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3
The Examiner maintains the following grounds of rejection:
1. Claims 1‒9 stand rejected under 35 U.S.C. §103(a) as unpatentable over the
combined disclosures of Abe
4
and Fathy;
5
and
2. Claim 1 stands provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 1 of
copending Application 12/653,710 filed December 17, 2009 (now U.S.
Patent 8,207,453 B2 issued to Qing Ma et al. on June 26, 2012) in view of
Abe. (Final Act. 2‒8 and Ans. 3‒5.)
DISCUSSION
35 U.S.C. §103
Upon consideration of the evidence on this record in light of the arguments
advanced by the Examiner and Appellants, we concur with Appellants that the
Examiner has not demonstrated that the collective teachings of Abe and Fathy
would have suggested the substrate recited in claims 1‒9 within the meaning of
35 U.S.C. § 103(a). Accordingly, we reverse the Examiner’s § 103(a) rejection of
the above claims for the reasons set forth in the Appeal Brief. We add the
following primarily for emphasis.
The Examiner has found, and Appellants do not dispute, that Abe discloses a
substrate (multilayer wiring board) comprising a core (a core portion made of
carbon fiber material and resin and an in-core wiring portion made of insulating
layers of glass fiber/resin material), at least one dielectric layer and at least one
metal layer disposed on the first surface of the core, and at least one dielectric layer
and at least one metal layer disposed on the second surface of the core, and a

4
US 2005/0218503 A1 published in the name of Abe et al. on October 6, 2005
(“Abe”).
5
US 6,320,547 B1 issued to Fathy et al. on November 20, 2001(“Fathy”).
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number of conductors electrically connected to the metal layers on the first and
second surfaces of the core. Compare Final Act. 3 with App. Br. 9‒14. As
acknowledged by the Examiner, Abe does not disclose employing amorphous solid
glass layers in the core portion or in-core wiring portion (designated as a core by
the Examiner) of its multilayer wiring board. Ans. 3‒4.
To remedy this deficiency in Abe, the Examiner has relied upon the
disclosure of Fathy to replace the in-core wiring portion of insulating layers made
of glass fibers and resin employed in Abe’s multilayer wiring board with the
ceramic layers (dielectric glass layers) of Fathy’s antenna. Ans. 4; App. Br. 12;
Fathy, col. 1, l. 65 to col. 2, l. 13. The portion of Fathy relied upon by the
Examiner explains that:
Ceramic layers deposited on either side of the metal core layer
are preferably dielectric glass layers. Typically, at least one dielectric
glass layer is formed on both sides of the metal core layer, although a
greater or lesser number of glass layers could be formed on either or
both sides. The electronic properties of the ceramics and metals are
suitable for high frequency operation. [See Fathy, column 4, lines 35‒
42.]

On the other hand, Abe teaches employing glass fibers and resin to impart “the
average coefficient of thermal expansion between 25
o
C. and 150
o
C. in a spread
direction of the surface of the [glass fiber/resin] insulating layer …to at least 10
ppm/
o
C. and less than 20 ppm/
o
C.” to prevent separation of such insulating layer
from the core portion made of carbon fiber material having a coefficient of thermal
expansion of approximately ‒1 to 1 ppm/
o
C. spreading in an in-plan direction of
the resin portion and an out-core wiring portion made of a laminated structure and
a wiring pattern. See Abe, pp. 2-3 and 6, ¶¶ [0011], [0014], [0016], [0017], [0021],
and [0055]. Nevertheless, the Examiner has not directed us to any evidence to
show that Fathy’s ceramic (glass) dielectric layers useful for high frequency
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antenna operation is also useful for imparting an average coefficient of thermal
expansion in a spread direction useful for Abe’s multilayer wiring board. Final
Act. 3-8 and Ans. 3-5.
Accordingly, on this record, we concur with Appellants that the Examiner’s
evidence and explanation are not sufficient to establish a prima facie case of
obviousness regarding the subject matter recited in claims 1‒9 within the meaning
of 35 U.S.C. § 103(a).

OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellants do not dispute the propriety of the Examiner’s nonstatutory
obviousness-type double patenting rejection of claim 1 on appeal based on claim 1
of copending Application 12/653,710 filed December 17, 2009 (now U.S. Patent
8,207,453 B2 issued to Qing Ma et al. on June 26, 2012) in view of Abe. Rather
than traversing the Examiner’s obviousness-type double patenting rejection,
Appellants “chose to wait until claims are allowed in the current application,
before filing a terminal disclaimer.” App. Br. 13.
Accordingly, we summarily affirm the Examiner’s nonstatutory
obviousness-type double patenting rejection of claim 1.
ORDER
Upon consideration of the record, and for the reasons given above, it is
ORDERED that the decision of the Examiner to reject claims 1 through 9
under 35 U.S.C. § 103(a) is REVERSED;
FURTHER ORDERED that the decision of the Examiner to provisionally
reject claim 1 on the ground of non-statutory obviousness-type double patenting is
AFFIRMED; and
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FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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