Ex parte Millican et al.

Board of Patent Appeals and Interferences

Jul 23, 1998

08161015 (B.P.A.I. Jul. 23, 1998)

Application for patent filed December 3, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LAVOIE R. MILLICAN and
VERN H. WINCHELL II
_____________
Appeal No. 96-0410
Application 08/161,0151
______________
ON BRIEF
_______________
Before THOMAS, KRASS and BARRETT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
Appeal No. 96-0410
Application 08/161,015
2
final rejection of claims 1 to 8 and 10 to 17, which constitute
all the claims remaining in the application.
Claim 1 is reproduced below:
1. A method of testing an integrated circuit die,
comprising the steps of:
disposing flat solder pads on the integrated circuit die;
probing said flat solder pads to perform an electrical test
on the integrated circuit die before a reflow solder process; and
reflowing said flat solder pads following said probing step
to transform said solder pads into rounded solder bumps.
The following references are relied on by the examiner:
Mones et al. (Mones) 4,273,859 June 16, 1981
Temple et al. (Temple) 4,814,283 Mar. 21, 1989
LeParquier et al. (LeParquier) 5,002,895 Mar. 26, 1991
Koopman et al. (Koopman) 5,289,631 Mar. 01, 1994
(Filed Mar. 4, 1992)
All claims on appeal stand rejected under 35 U.S.C. § 103.
As evidence of obviousness, the examiner relies upon LeParquier
in view of Koopman and Mones as to claims 1 to 3 and 10 to 12,
with the addition of Temple as to claims 4 to 8 and 13 to 17.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
Appeal No. 96-0410
Application 08/161,015
3
We reverse the outstanding rejections of all the claims on
appeal.
It appears that the examiner has not come to grips with the
requirement of the first stated step of independent claim 1 on
appeal, that of disposing “flat solder pads” on the integrated
circuit. We find that no reference relied upon by the examiner
in the first stated rejection teaches such a feature,
notwithstanding the examiner’s attempt to reformulate the
assessment of the prior art at page 5 of the answer.
LeParquier’s integrated circuit component connection pads P in
his prior art Figs. 1 to 3 are not stated in the reference to be
flat solder pads as required by independent claim 1 on appeal.
The discussion at the top of col. 3 of the reference indicates
that a separate solder projection or bump 1 is formed on this pad
P, as depicted in prior art Fig. 2 of LeParquier, both of which
appear in this figure to maintain their separate physical
integrity. Therefore, the formation of the solder bump 1 does
not appear to occur from any solder already present in the pad P
on the chip IC. Collectively taken, however, the combination of
the solder bump 1 and the pad P may be considered a solder pad
but it is not stated to be flat and it is not probed directly,
whereas the probing actually occurs on the tape 4 at tape testing
Appeal No. 96-0410
Application 08/161,015
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pads 5 in Figs. 1 and 2. LeParquier’s contribution in the art
depicted in Figs. 4 through 6 appears to use welding rather than
soldering.
Continuing on the same points, the barrier metal layer 24 in
Fig. 2 of Mones may be considered to be a flat pad on an
integrated circuit substrate, but again there is no flat solder
pad that is formed before the solder bump 28 as depicted in Fig.
3 of this reference. There is no testing in Mones. Finally
Koopman’s figures show the formation of a solder bump 15 on the
integrated circuit chip 11 in the Fig. 1 series of figures.
As to the feature of the claims requiring flat solder pads,
appellants’ own admitted prior art appears to have been a better
starting point than any of the references relied upon by the
examiner. Indeed, except for the feature of independent claim 1
of probing a flat solder pad directly before reflowing the
solder, the other features of this claim appear to have been
known in appellants’ admitted prior art.
The real question is still as correctly identified by the
examiner that the order of the steps was critical to an
understanding of the claimed invention, as expressed by the
examiner at the top of page 6 of the answer. However, we
disagree with the examiner’s conclusion that Koopman teaches that
Appeal No. 96-0410
Application 08/161,015
5
the claimed order of the steps is taught or suggested by this
reference. Koopman clearly teaches probing before a reflow
solder process, which reflow solder process may be an option
according to the showing in Fig. 1E and the teaching at col. 8,
lines 15 through 19 as identified by the examiner in the answer.
Again, there is no starting point of flat solder pads in this or
in any other reference relied upon before the reflow solder
process and there is no teaching or suggestion of probing flat
solders pads with an electrical test instrument as also required
by this claim.
Finally, even if we were to consider appellants’ background
of the invention at pages 1 and 2 of the specification as filed
as part of the reasoning process of the outstanding rejection
under 35 U.S.C. § 103 in addition to the prior art relied upon to
LeParquier, Koopman and Mones according to the examiner’s
statement of the rejection, we do not end up with the reordering
of the prior art approach which is the formation of solder bumps,
testing the bumps and than executing a reflow process. Stated
differently, even considering these three references as applied
along with the prior art approach expressed by appellants in
pages 1 and 2 of the specification as filed, the artisan would
have not been led to have reordered the prior art process to
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Application 08/161,015
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arrive at the claimed invention of first testing with electrical
test probing instruments flat solder pads and than reflowing the
tested or probed flat solder pads to form solder bumps.
Since independent claim 10 is more detailed than the similar
requirements of independent claim 1 on appeal, the rejection of
this claim must also be reversed. As such, the rejection of
dependent claims 2 and 3 and 11 and 12 must be reversed, as well
as the remaining dependent claims, further relying upon Temple.
Therefore, the decision of the examiner rejecting claims 1 to 8
and 10 to 17 under 35 U.S.C. § 103 is reversed.
REVERSED
)
JAMES D. THOMAS )
Appeal No. 96-0410
Application 08/161,015
7
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
Vincent B. Ingrassia
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