Ex Parte OYAMADA et al

Patent Trial and Appeal Board

Feb 26, 2019

14915189 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/915,189 02/26/2016
20277 7590 02/28/2019
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Tetsuya OY AMADA
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.
089994-0013 2205
EXAMINER
JEAN BAPTISTE, WILNER
ART UNIT PAPER NUMBER
2899
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUY A OY AMADA,
TOMOHIRO UNO,
HIROYUKI DEAI, and
DAIZO ODA 1
Appeal2019-001325
Application 14/915, 189 2
Technology Center 2800
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
pending claims 1-18. We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 These are the named inventors of the present application.
2 Nippon Steel & Sumikin Materials Co., Ltd. and Nippon Micrometal
Corporation are the Applicants/ Appellants and are also identified as the real
party in interest. (App. Br. 1.)
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Application 14/915, 189
Appellants' invention relates generally to a bonding wire for a
semiconductor device used to connect electrodes on semiconductor
elements. (Spec. ,r 1.) Representative claims 1 and 18 are reproduced
below:
1. A bonding wire for a semiconductor device containing
one or more of In, Ga, and Cd for a total of 0.05 to 5 at%, and a
balance being made up of Ag and incidental impurities, wherein
the bonding wire contains no more than 5 at% of Au.
18. A bonding wire for a semiconductor device containing
one or more of In, Ga, and Cd for a total of 0.05 to 5 at%, and a
balance consisting essentially of Ag and incidental impurities.
Claims Appendix to App. Br.
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 1--4, 7-9, 12, 13, 16, and 18 rejected under 35 U.S.C. § 103
as unpatentable over Terashima (US 2009/0072399 Al, pub.
Mar. 19, 2009) in view of Cho (US 2008/0240975 Al, pub. Oct. 2,
2008).
II. Claims 5, 10, and 14 rejected under 35 U.S.C. § 103 as
unpatentable over Terashima in view of Cho, and Chuang (US
2014/0209215 Al, pub. July 31, 2014).
III. Claims 6, 11, and 15 rejected under 35 U.S.C. § 103 as
unpatentable over Terashima in view of Cho, and Uno I (US
2011/0011619 Al, pub. Jan. 20, 2011).
IV. Claim 17 rejected under 35 U.S.C. § 103 as unpatentable over
Terashima in view of Cho, and Uno II (US 2007/0228534 Al, pub.
Oct. 4, 2007).
2
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Application 14/915, 189
OPINION3
After consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine the Examiner erred in the determination that the combination of
Terashima and Cho would have suggested an Ag bonding wire for a
semiconductor device containing 0.05 to 5 at% of one or more of In, Ga, and
Cd and no more than 5 at% of Au as required by independent claim 1 and
does not contain Au as required by independent claim 18.
The Examiner found that T erashima teaches a bonding wire that
comprising Ag and from 2 to 100000 mass ppm of In. (Final Act. 3;
Terashima ,r 21.) The Examiner found Terashima discloses the bonding
wire contains a balance of an inevitable impurity of Ag. (Final Act. 4.) The
Examiner found Terashima does not disclose the bonding wire contains no
more than 5 at% of Au as required by independent claim 1. The Examiner
found Cho teaches an Ag bonding wire composition comprising Ag and can
comprise 0.05 to about 5 weight percent of Au. 4 (Final Act. 4; Cho ,r 19.)
The Examiner concludes for claim 1 that it would have been obvious
"to combine the teachings of Terashima with Cho et al., to prevent the
occurrence of a chip crack in the bonding surface, and improve bonding
strength [0020] of Cho." (Final Act. 4.) The Examiner concludes for claim
18 that it would have been obvious
to select the appropriate material for the bonding wire, since it
has been held to be within the general skill of a worker in the
art to select a known material on the base of its suitability, for
3 We limit our discussion to independent claims 1 and 18.
4 The complete statement of the rejections on appeal appears in the
Final Office Action. (Final Act. 3-14.)
3
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Application 14/915, 189
its intended use involves only ordinary skill in the art. In re
Leshin, 125 USPQ 416.
(Final Act. 5.)
Appellants argue Terashima is directed to gold bonding wires
comprising gold ranging from 99.99% to 10%. (App. Br. 4; Terashima
Tables 1-6.) Appellants argue Terashima provides 2 examples that contain
indium, however, the indium exemplified is outside the claimed range of
0.05 to 5 at%. (App. Br. 4.) Appellants argue Cho is directed to silver
bonding wires that do not include indium, gallium, or cadmium (the additive
is required by independent claims 1 and 18). (App. Br. 5.)
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992). "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)); see
also Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555
F.3d 984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made
explicit' refers not to the teachings in the prior art of a motivation to
combine, but to the court's analysis.").
We agree with Appellants that the Examiner's rejection of
independent claims 1 and 18 is not well-founded. The Examiner's rejection
is premised on the modification of a gold bond wire composition described
by Terashima with the teachings of Cho. The Examiner relies on Cho for
teaching silver bonding wires having no more than 5 at% gold. Terashima is
4
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Application 14/915, 189
directed to gold bonding wires comprising gold ranging from 99.99% to
10%. Terashima specifically states:
[T]he inventors of the present invention keenly studied and
found out that if a bonding wire contains 10 to 90 mass % of
Ag and the balance is comprised of Au and inevitable
impurities thereof, it is possible to stably set the breaking
elongation of the bonding wire to be 7 to 20% and to stably set
stress at 1 % elongation to be within a range from greater than or
equal to 90% of the tensile strength and to less than or equal to
100% thereof at a fast wire drawing rate. That is, in
considering industrially stable manufacturing of the products,
the foregoing element base is desirable. It is expected that in a
Au-Ag bonding wire having the foregoing composition, the
texture in which < 111 > direction indicated by Au and a line
direction is parallel to each other and the texture in which
< 100> direction indicated by Ag and a line direction is parallel
to each other act synergically, the Au texture provides a high
strength, and the Ag texture indicates a high ductility.
(Terashima ,r 34.)
The Examiner recognizes that Cho teaches silver bonding wires
having no more than 5 at% gold. However, the Examiner has not adequately
explained why a person of ordinary skill in the art would have removed gold
from Terashima's bond wire composition which requires the gold texture to
provide high strength. Accordingly, we reverse the Examiner's rejections of
independent claims 1 and 18. 5
For the foregoing reasons and those stated in the Briefs, we determine
that the Examiner's conclusion of obviousness is not supported by facts.
5 The additional references relied upon by the Examiner in obviousness
Rejection II-IV were cited to address limitations of the dependent claims
that are not related to our discussion of the independent claims.
5
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"Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, the Examiner's rejections of claims 1-18 over the cited
prior art are reversed.
ORDER
The obviousness rejections of claims 1-18 are reversed.
REVERSED
6