Ex Parte Shimoto et al

Board of Patent Appeals and Interferences

Jun 15, 2012

10701594 (B.P.A.I. Jun. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TADANORI SHIMOTO, HIROKAZU HONDA,
KEIICHIRO KATA, HIDEYA MURAI,
KATSUMI KIKUCHI, and KAZUHIRO BABA
____________________

Appeal 2009-011655
Application 10/701,594
Technology Center 2800
____________

Before: MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011655
Application 10/701,594

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 6-14, 16, 18, 21, 61, 63, and 64. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention is directed to a “printed circuit board
on which various devices such as semiconductor devices can be densely
mounted and a semiconductor package using this printed circuit board and a
manufacturing method for the interconnect substrate.” Spec. 5, ¶12].
Independent claim 6, reproduced below, is representative of the
subject matter on appeal.
6. A semiconductor package comprising:

a printed circuit board and a semiconductor device mounted on
said printed circuit board, wherein said printed circuit board
comprises:

a lower interconnect;

a base insulating film formed on said lower interconnect;

a via hole formed on said base insulating film;

an upper interconnect connected to said lower
interconnect with said via hole, wherein said base insulating
film comprises,

a gluing resin layer, and

an insulating layer formed on said gluing resin layer.
Appeal 2009-011655
Application 10/701,594

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REFERENCES and REJECTION
The Examiner rejected claims 6-14, 16, 18, 21, 61, 63, and 64 under
35 U.S.C. § 103(a) as being obvious over Admitted by Appellants Prior Art
(JP – 2002-198462) hereinafter “APA” in view of Echigo (U.S. Patent
Application Publication Number 2002/0029906 A1, published March 14,
2002).

ISSUE
The pivotal issue is whether the Examiner erred in finding that Echigo
teaches the limitation of “a gluing resin layer” as recited in claim 6.

ANALYSIS
Rejection of claims 6-14, 16, 18, 61, and 63
Appellants argue that the Examiner failed to establish prima facie
obviousness “because there is no support that Echigo uses a resin layer as a
gluing resin layer” and “the portion of Echigo cited as support for the
Examiner’s position only teaches of[sic] an adhesive layer 102” (App. Br. 9,
13).
We do not agree. We agree with the Examiner (Ans. 13) that Echigo
teaches “adhesive layers 102 . . . such as . . . modified polyimide base”
(¶ [0043]) which is also referred to as a “[m]odified polymide base resin” (¶
[0048] (emphasis added)). Thus, Echigo teaches a resin layer as a gluing
layer as recited in claim 6.
Appellants further argue that Echigo does not indicate that the
combination of the adhesive layer and the insulating film or the adhesive
layer can stop the crack in the semiconductor package (App. Br. 11) and the
Appeal 2009-011655
Application 10/701,594

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crack is not suppressed in a process to make the semiconductor package
(App. Br. 12).
We do not agree. Appellants’ arguments are not commensurate in
scope with the claimed language, which is silent with respect to the adhesive
layer stopping the crack in the semiconductor package.
Accordingly, we affirm the Examiner’s rejection of claim 6 and for
the same reasons the Examiner’s rejection of claims 7-14, 16, 18, 61, and 63.
Rejection of claims 9-14, 21, 61, and 64
Appellants further argue that the rejections of claims 9-14, 21, 61, and
64 are in error “because even if these materials are applied for the same
intended use (in some instances), this fails to support that Examiner’s
conclusion that they must somehow have the same properties” (App. Br. 14).
We do not agree with Appellants’ arguments. Our reviewing court
has said:
W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristics relied
on.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
The Examiner essentially asserted that because the materials used are
applied for the same purpose and are used under the same conditions
(temperature, pressure, employed conditions, and so on) then it would be
inherent that they would have the same properties (Ans. 14). Accordingly, it
is Appellants’ burden to show that the materials of the prior art would not
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Application 10/701,594

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have a ratio value of 4.5 or less. We find that Appellants have not satisfied
this burden.
Thus, we also affirm the Examiner’s rejections of claims 9-14, 21, 61,
and 64.

CONCLUSION
The Examiner did not err in finding that Echigo teaches the limitation
of “a gluing resin layer” as recited in claim 6.

DECISION
The Examiner’s decision rejecting claims 6-14, 16, 18, 21, 61, 63, and
64 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2011).

AFFIRMED

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