11170883 (B.P.A.I. Jun. 28, 2012)

Ex Parte Takiar et al

Board of Patent Appeals and InterferencesJun 28, 2012

11170883 (B.P.A.I. Jun. 28, 2012)

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. 11/170,883 06/30/2005 Hem Takiar SAND-01070US1 7368 64948 7590 06/29/2012 VIERRA MAGEN/SANDISK CORPORATION 575 MARKET STREET SUITE 2500 SAN FRANCISCO, CA 94105 EXAMINER CRUZ, LESLIE PILAR ART UNIT PAPER NUMBER 2826 MAIL DATE DELIVERY MODE 06/29/2012 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 HEM TAKIAR, SHRIKAR BHAGATH, and KEN JIAN MING WANG ____________ Appeal 2010-005298 Application 11/170,883 Technology Center 2800 ____________ Before MARC S. HOFF, THOMAS S. HAHN, and ELENI MANTIS MERCADER , Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005298 Application 11/170,883 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 12-14, 16, 29, 30, 32, 33, 35, 36, 38-43, and 45-52. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellants’ claimed invention is directed to a dummy circuit pattern with lines wherein the length of a straight segment may be set to maintain stresses below a certain level. See Spec. 10, ¶[0036]. Independent claim 12, reproduced below, is illustrative of the subject matter on appeal. 12. A dummy circuit pattern formed on a surface of a substrate for a semiconductor package, the dummy circuit pattern comprising: a straight line segment including: a width; and a length based on length determined to maintain stress within the straight line segment below a given stress level. REFERENCES and REJECTIONS The Examiner rejected claims 12, 13, 16, 29, 30, 32, 33, 41-43, 45, and 46 under 35 U.S.C. § 102(b) based upon the teachings of Tsai (U.S. Patent No. 6,380,633 B1, issued April 30, 2002). The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based upon the teachings of Tsai and Lin (U.S. Patent No. 6,534,852 B1, issued March 18, 2003). Appeal 2010-005298 Application 11/170,883 3 The Examiner rejected claims 35, 36, 38, and 39 under 35 U.S.C. § 103(a) based upon the teachings of Tsai. The Examiner rejected claims 40, 47, 49, 50, and 52 under 35 U.S.C. § 103(a) based upon the teachings of Tsai in view of Takizawa (U.S. Patent Application Publication No. 2002/0043715 A1, published April 18, 2002). The Examiner rejected claims 47, 48, and 51 under 35 U.S.C. § 103(a) based upon the teachings of Lin in view of Takizawa. ISSUE The pivotal issue is whether Tsai teaches “a straight line segment including . . . a length based on a length determined to maintain stress within the straight line segment below a given stress level” as recited in claim 12. PRINCIPLES OF LAW “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.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). ANALYSIS Claims 12, 13, 16, 29, 30, 32, 33, 41-43, 45, and 46 Appellants argue that while Tsai teaches that the two dimensional grid pattern reduces stress, there is simply no teaching or suggestion of any kind regarding limiting lengths of individual line segments due to stress buildup (App. Br. 14). Appellants explain that, in fact, one of skill in the art would Appeal 2010-005298 Application 11/170,883 4 see the evidence is to the contrary because “t]he lengths of the line segments are provided to form a grid pattern that fills the space not taken up by the conductance pattern” (App. Br. 14). The Examiner responds to Appellants’ argument stating that Appellants’ claims 12, 29, and 41 does not distinguish over the Tsai reference regardless of the process used to form a straight line segment of the dummy circuit pattern because only the final product is relevant, not the process of making such as ‘a length determined to maintain stress within the straight line segment below a given stress level’” (Ans. 15). The Examiner also asserts that “the ‘given stress level’ may be interpreted as a stress level that is higher than the level of stress that the straight line segment of Tsai inherently has” (Ans. 16). The Examiner concludes that “persons of ordinary skill in the art would recognize that it is inherent for the straight line segment of the dummy circuit pattern of Tsai to maintain stress within the straight line segment below a given stress level because the dummy circuit pattern of Tsai necessarily reduces the thermal stress of the circuit substrate” (Ans. 16). We are persuaded by Appellants’ argument. First, we do not agree with Examiner that claim 12 is a product by process claim. Rather, claim 12 positively recites a property of a dummy circuit pattern which includes the length of a straight line segment being below a given stress level. Furthermore, we do not see how the dummy circuit pattern in Appellants’ Figures 2, 4, 5, and 6 are the same products as the product of Tsai’s Figure 4. Second, Tsai at best teaches a grid pattern design to avoid or reduce stress (col. 2, ll. 21-24 and col. 4, ll. 24-28) having traces of a particular Appeal 2010-005298 Application 11/170,883 5 width (col. 4, ll. 8-15). Nothing is mentioned regarding choosing the length of the traces so as to reduce the stress, as required by claim 12. The fact that traces in Tsai inherently have a length does not necessarily mean that the particular length was chosen to reduce stress. See Robertson, 169 F.3d at 745. We agree with Appellants that, observing Tsai’s Figure 4, one of skill in the art would know that the lengths of the line segments are provided to form a grid pattern that fills the space not taken up by the conductance pattern (App. Br. 13-14), regardless of the length of the segments. Accordingly, we reverse the Examiner’s rejection of claim 12 and for the same reasons the rejections of claims 13, 16, 29, 30, 32, 33, 41-43, 45, and 46. Claims 14, 35, 36, 38-40, and 47-52 We also reverse the Examiner’s rejections of claims 14, 35, 36, 38-40, and 47-52 for the same reasons as articulated supra, since the additional references of Lin and Takizawa do not cure the above cited deficiencies. CONCLUSION Tsai does not teach “a straight line segment including . . . a length based on a length determined to maintain stress within the straight line segment below a given stress level” as recited in claim 12. DECISION The Examiner’s decision rejecting claims 12-14, 16, 29, 30, 32, 33, 35, 36, 38-43, and 45-52 is reversed. Appeal 2010-005298 Application 11/170,883 6 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)(2010). REVERSED Pgc/llw