Ex Parte Rumsey et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10421079 (B.P.A.I. Sep. 27, 2010)

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.
10/421,079 04/23/2003 Brad D. Rumsey ROUND 3.0-082 DIV I 5408
58907 7590 09/27/2010
ROUND
LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
TRINH, HOA B
ART UNIT PAPER NUMBER
2893
MAIL DATE DELIVERY MODE
09/27/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRAD D. RUMSEY, PATRICK W. TANDY,
WILLAM J. REEDER, STEPHEN F. MOXHAM,
STEVEN G. THUMMEL, DANA A. STODDARD,
and JOSEPH C. YOUNG
____________

Appeal 2010-011181
Application 10/421,079
Technology Center 2800
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-011181
Application 10/421,079

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 37-44 and 66-77.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
After a panel remand to clarify the status of a claim on appeal, the
Examiner entered a substitute Examiner’s Answer. Appellants filed a reply
brief in response.
We reverse the present rejections on appeal.

Representative Claim
37. A method of building an integrated circuit package
comprising the acts of:

(a) providing a substrate having a first surface and a second
surface, the second surface having a plurality of pads, each pad
having one or more conductive traces on the second surface
extending therefrom and configured to increase the shear
strength of the pad as compared to the pad alone; and

(b) disposing an integrated circuit die onto the substrate.

Examiner’s Rejections
All the claims on appeal are rejected over Anderson (US 6,462,414
B1). Claims 37, 66, 69, and 70 are rejected for anticipation under 35 U.S.C.
§ 102(e). Claims 38-44, 67, 68, and 71-77 are rejected for obviousness
under § 103(a).

2 Claim 65 stands allowed. Claims 1-36 and 45-64 have been canceled.
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Appeal 2010-011181
Application 10/421,079

PRINCIPLES OF LAW
“Anticipation is established only when a single prior art reference
discloses, expressly or under principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984) (citation omitted).
To establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” “Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”

In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).

ANALYSIS
The Examiner finds the independent claims (37, 66, and 70) to be
anticipated by Anderson. Anderson appears to be directed to substantially
the same problem as the instant invention -- increasing resistance to shear
forces at the interface of a solder ball and a ball land area in a ball grid array
(BGA) package. See Anderson col. 4, l. 61 - col. 5, l. 4.
As the Examiner seems to acknowledge, Anderson describes a way
for increasing shear strength that is outside the scope of the claims. As
shown, for example, in Figures 4 and 6A through 6K, Anderson teaches
additional conductive material (46) at the interface of the conductive ball
and the conductive ball pad. Anderson col. 6, l. 30 - col. 7, l. 59.
However, the anticipation rejection refers to the “conductive traces”
mentioned in column 4 of the reference, which are not depicted in
Anderson’s drawings. The Examiner finds that the conductive traces are
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Appeal 2010-011181
Application 10/421,079

“inherently” configured to increase the shear strength of each pad as
required by claim 66, and “inherently” configured to increase the shear
strength of each pad as compared to the pad alone as required by each of
claims 37 and 70.
We agree with Appellants that the rejection based on the principles of
“inherency” cannot stand. The rejection fails to provide extrinsic evidence
in support of the finding of inherency. The rejection also fails to point out
and evaluate any evidence in the record that would support the finding of
inherency. The rejection fails, in fact, to provide any explanation at all in
support of why Anderson should be deemed to “inherently” describe the
claimed invention.
Appellants’ Table 1 in the Specification (at 15), and Figures 7b
through 7i and 8, show that particular trace configurations yield different
average shear strengths. However, the Specification does not describe a
measured shear strength for a pad alone (Fig. 7A). We thus cannot say, on
this record, that the mere presence of one or more traces connected to a land
pad -- e.g., traces having an unknown “configuration” as described by
Anderson -- would serve to increase the shear strength of a pad.
The § 103(a) rejection applied against dependent claims also relies on
the unsupported finding of inherency. To the extent that the rejection may
also be based on the ordinary artisan’s skill in routine experimentation and
optimization, we note that Appellants’ teachings in the disclosure are the
sole evidence in the record that different trace configurations yield different
shear strengths. The ordinary artisan thus, on this record, had no knowledge
that would have led to experimenting with different trace configurations.
We therefore cannot sustain the rejection of any claim on appeal.
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Appeal 2010-011181
Application 10/421,079

DECISION
We reverse the § 102 and § 103(a) rejections over Anderson.

REVERSED

msc

ROUND
LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
600 SOUTH AVENUE WEST
WESTFIELD NJ 07090
5