Infineon Technologies Austria AG

Patent Trials and Appeals Board

Jul 6, 2020

2019004821 (P.T.A.B. Jul. 6, 2020)

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.
15/371,554 12/07/2016 Stefan Schwab 1012-1778 /
2015P50620 US
7966
57579 7590 07/06/2020
MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES
1255 CRESCENT GREEN
SUITE 200
CARY, NC 27518
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte STEFAN SCHWAB
and HERBERT HUTTER
____________
Appeal 2019-004821
Application 15/371,554
Technology Center 1700
____________
Before LINDA M. GAUDETTE, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 4–22, and 28–33 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/371,554 filed Dec. 7, 2016 (“the ’554 App.”); the Final Office Action
dated May 16, 2018 (“Final Act.”); the Appeal Brief filed Jan. 11, 2019
(“Appeal Br.”); the Examiner’s Answer dated Apr. 1, 2019 (“Ans.”); and the
Reply Brief filed May 31, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as INFINEON
TECHNOLOGIES AUSTRIA AG. Appeal Br. 2.
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Application 15/371,554
2
15/371,554, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM IN PART.
According to the ’554 Application, smaller semiconductor devices
cause an increasing risk that migrating ions will reach, for example, the gate
oxide, leading to a shift in the threshold voltage and possibly a failure of the
device. Spec. ¶ 2. To address this issue, the subject matter of the invention
relates to semiconductor devices having a barrier and an encapsulation for a
semiconductor device that provide improved barrier or ion getter properties.
Spec. ¶ 3.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A semiconductor device, comprising:
a first semiconductor chip comprising a semiconductor
substrate;
a barrier layer disposed at least on, in or at a portion of
the first semiconductor chip; and
an encapsulation enclosing the first semiconductor chip
and the barrier layer,
wherein the barrier layer comprises a polymer material
and an organic metal complexing agent covalently bound to the
polymer material.
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REFERENCES
The Examiner relies on the following references:
Name Reference Date
Wong US 4,278,784 July 14, 1981
Takahashi et al.
(“Takahashi”)
US 5,287,000 Feb. 15, 1994
Krieger et al.
(“Krieger”)
US 2003/0173612 A1 Sept. 18, 2003
Amano et al.
(“Amano”)3
JP 2002-359326 A Dec. 13, 2002
REJECTIONS
The Examiner maintains the rejections under 35 U.S.C. § 1034 of
(1) claims 1, 2, 4–7, 9–12, 14–22, and 28–33 over Amano in view of Wong;
and (2) claims 1, 2, 4, 5, 7, 8, 12–17, and 19–21 over Krieger in view of
Takahashi. Final Act. 2–5.
DISCUSSION
Rejection of claims 1, 2, 4–7, 9–12, 14–19 as obvious over Amano in
view of Wong5
Appellant argues that the rejection of claims 1, 2, 4–12, and 14–19
over Amano in view of Wong is an improper group rejection that discusses

3 The Examiner relies on a computer translation of Amano, to which
Appellant has not objected. See Final Act. 2; see generally Appeal Br. and
Reply Br.
4 Because this application was filed after the March 16, 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
5 In the Answer, the Examiner withdrew the earlier rejection of claim 8 over
Amano in view of Wong. Ans. 3.
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some features of claim 1, but does not address the specific requirements of
dependent claims,6 thus depriving Appellant of any meaningful opportunity
to respond to the rejection. Appeal Br. 12–13.
In the Final Office Action, the Examiner finds that Amano teaches a
sealing resin layer is disposed on a portion of a semiconductor chip that
catches ions, but fails to teach that the sealing layer has an organic metal
complexing agent covalently bound to the polymer material. Final Act. 2.
The Examiner finds that Wong teaches a polymeric silicone sealant for
semiconductor devices that prevents mitigation of ions and comprises a
2.2.1-cryptand or a 2.2.2-cryptand covalently bound to a silicone polymer.
Id. The Examiner also finds that Wong’s Examples teach the claim 9
amounts. Id. The Examiner concludes that it would have been obvious to use
Wong’s sealing layer as the sealing layer of Amano to prevent mitigation of
ions. Id.
In the Answer, the Examiner states that Appellant has not provided
any specific arguments against the rejection, thus the Board should maintain
the rejection. Ans. 7. The Examiner notes that the Final Office Action states
“Wong teaches the claimed amount of claim 9 (Examples).” Id. In contrast
to the Final Office Action, in the Answer, the Examiner finds that “Wong is
used for the encapsulation,” without further comment. Compare Final Act.
2, with Ans. 7.
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re

6 Appellant separately argues for patentability of claim 8 over Amano in
view of Wong, but the rejection is withdrawn, making Appellant’s argument
moot as to claim 8. See Appeal Br. 9–11, Ans. 3.
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner meets that
burden, Appellant bears the burden of coming forward with evidence or
argument in rebuttal. Id. However, where, as here, the references cited by the
Examiner fail to establish a prima facie case of obviousness, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
1988).
The Examiner fails to substantiate that all limitations of claims 1, 2,
4–7, 9–12, and 14–19 are disclosed in the cited references or would have
been obvious to one of ordinary skill in the art before the filing date of the
claimed invention. Specifically, the Examiner fails to substantiate any
disclosure of both the barrier layer and the encapsulation required by
independent claims 1 and 19. See Final Act. 2; Ans. 7. The Examiner’s
single sentence in the Answer that “Wong is used for the encapsulation” is
insufficient in light of the Examiner’s earlier reliance on Wong for teaching
sealants comprising specific cryptands to meet the barrier layer limitation.
Compare Ans. 7, with Final Act. 2.
Because the rejection is not sufficient to render independent claims 1
and 19 obvious, it is likewise insufficient to render the claims depending
from claim 1 obvious. In particular, contrary to the Examiner’s finding that
“Wong teaches the claims amount of claim 9 (Examples)” (Final Act. 2),
nothing in Wong’s Examples teaches or suggests “wherein a concentration
of the organic metal complexing agent covalently bound to the polymer
material is in a range of 1 mol of the organic metal complexing agent per
200 g of the polymer material to 1 mol of the organic metal complexing
agent per 1,500,000 g of the polymer material,” as required by claim 9. See
Appeal Br. 15 (Claims App.).
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We do not sustain the rejection of claims 1, 2, 4–7, 9–12, and 14–19
over Amana in view of Wong.
Rejection of claims 20–22 as obvious over Amano in view of Wong
Claim 20 is independent and is identical to claim 1 except that claim
20 requires the encapsulation—rather than the barrier layer—comprises a
polymer material and an organic metal complexing agent covalently bound
to the polymer material. Compare Appeal Br. 14 (Claims App.), with id. at
17. Claims 21 and 22 depend from claim 20.
The Examiner’s findings in relation to claims 20–22 are substantially
the same as the findings in relation to claim 1. Compare Final Act. 2, with
id. at 3.
Importantly, Appellant fails to address the patentability of claims 20–
22 over Amano in view of Wong in the Appeal Brief. See generally Appeal
Br. Therefore, we summarily affirm the rejection of clams 20–22 over
Amano in view of Wong. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011)) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the [E]xaminer’s rejections.”).
Rejection of claims 28–33 as obvious over Amano in view of Wong
Claim 28 recites, inter alia, “a barrier layer . . . having an opening or
interruption which exposes a contact area at the first surface of the
semiconductor chip.” Appeal Br. 18 (Claims App.). Unlike the other
independent claims, claim 28 does not require both a barrier layer and an
encapsulation.
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Appellant argues for patentability of independent claim 28, but does
not make separate arguments for its dependent claims 29–33. Appeal Br. 5–
9. Claims 29–33 stand or fall with claim 28. 37 C.F.R. § 42.37(c)(1)(iv).
The Examiner relies on Amano’s Figure 5(a) to teach the “opening or
interruption” limitation. See Ans. 4. Amano’s Figure 5 is reproduced below:

Amano’s Figure 5(a) is a cross sectional view of a semiconductor
device disclosed in the reference. Amano ¶ 52. Amano states that mesa-type
chip 17 is joined to leadframe 406 and to electrode plate 401 with solder. Id.
Wire 402 is spot welded to cathode lead terminal 403 and electrode plate
401. Id. Surface protection film 15 of polyimide resin with ion-exchange
resin 102 uniformly mixed in is formed and a resin seal is carried out by a
transfer mold thereafter. Id.
The Examiner finds that Amano’s Figure 5 demonstrates the presence
of a bond wire (402) that goes through a barrier layer (102) to contact a
semiconductor (17). Ans. 4. The Examiner finds that an opening or
interruption in the barrier layer must be present for the wire to be able to
contact the semiconductor. Id. The Examiner finds that the wire would not
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be able to contact the semiconductor chip if the barrier layer completely
covered the semiconductor chip. Id. at 5.
Appellant’s argument for nonobviousness is limited to whether
Amano discloses “an opening or interruption which exposes a contact area.”
See Appeal Br. 5–9; Reply Br. 2–3. Appellant contends “Amano’s sealing
resin layer 102 does not expose any ‘contact area.’” Reply Br. 2; see also
Appeal Br. 8. According to Appellant, Amano’s wire contacts the surface of
the semiconductor chip, and the sealing resin layer completely covers the
surface of the semiconductor chip outside of the wire, thus the sealing resin
layer seals the semiconductor chip. Id.; see also Appeal Br. 8 (“[T]he chip
17 and the electrode plate 102 are completely encapsulated by the sealing
resin layer 102.”).
Appellant argues that the Examiner’s interpretation of “opening or
interruption” misapplies the broadest reasonable interpretation standard for
claim construction. Reply Br. 2. More specifically, Appellant argues that the
Specification indicates that “the opening or interruption 326 can be
configured to provide a contact area for the bond wire 310 to contact the
semiconductor component 110. Specifically, the opening or interruption 326
can expose a portion of the semiconductor component 110 to provide the
contact area.” Id. at 3 (quoting Spec. ¶ 75).
Appellant’s argument is unpersuasive.
“During examination ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Absent any special definitions,
we give claim terms their ordinary and customary meaning, as would be
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understood by one of ordinary skill in the art at the time of the invention. In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also
TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“Under
a broadest reasonable interpretation, words of the claim must be given their
plain meaning, unless such meaning is inconsistent with the specification
and prosecution history.”). Any special definitions for claim terms must be
set forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994).
Our review of the Specification reveals that it does not provide any
special meaning for the claim term “opening or interruption.” The Merriam-
Webster Dictionary defines “interruption” as “a break in the continuity of
something.”7 Furthermore, the Specification supports that the opening or
interruption merely allows a bond wire to be attached to the contact area.
See Spec. ¶ 75. Thus, the Examiner’s interpretation of the hole in Amano’s
resin 102 through which bond wire 402 passes when welded to electrode
plate 401 and cathode lead terminal 403 as the claimed “opening or
interruption” is entirely consistent with the broadest reasonable
interpretation of the term.
Moreover, claim 28 is drawn to a semiconductor device, not a process
for making a semiconductor device. Appellant’s argument essentially
attempts to insert a stepwise process into the claim: first an opening
exposing a contact area is formed in a barrier layer, then an electrical
conductor is connected to the contact area. Even were such limitation
present, it would not add a patentable distinction when the claimed product

7 Merriam-Webster Dictionary (2020) available at https://www.merriam-
webster.com/dictionary/interruption.
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is the same as the cited art’s product. See In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).
The Examiner’s finding supports a prima facie case of obviousness of
claim 28 over Amano in view of Wong that Appellant does not successfully
rebut. We affirm the rejection of claim 28 over Amano in view of Wong. For
the same reasons, we also affirm the rejection of claims 29–33 which depend
from claim 28.
Rejection of claims 1, 2, 4, 5, 7, 8, 12–17, and 19–21 as obvious over
Krieger in view of Takahashi
The Examiner finds that Krieger teaches semiconductor memory
devices with a layer that is disposed between two semiconductor chips
wherein the layer comprises a claimed polymer with covalently bound ether
groups, but fails to teach claimed encapsulation. Final Act. 4. The Examiner
relies on Takahashi as teaching addition of a resin encapsulation to a
semiconductor memory device. Id. The Examiner determines that it would
have been obvious to one of ordinary skill in the art to add a resin
encapsulation as taught by Takahashi to the semiconductor memory device
of Krieger to improve the yield, electric reliability, operation and speed, and
heat resistance. Id. at 5. The Examiner specifically addresses claim 17 in the
Answer. See Ans. 8. Claim 17 depends from claim 1 and further recites
“wherein the semiconductor device is a power semiconductor device.”
Appeal Br. 16 (Claims App.). The Examiner finds that “power
semiconductor device” is merely a recitation of intended use and does not
provide additional structural requirements. Ans. 8.
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As with the similar rejection over Amano in view of Wong, the
Examiner states that Appellant has not provided any specific arguments
against the rejection, thus the Board should maintain the rejection. Id. at 7.
For all claims in the rejection except claim 8, Appellant argues that
the rejection is an improper group rejection that ignores the numerous,
unique features of the dependent claims. Appeal Br. 13. Appellant makes a
separate argument for patentability of claim 8 over Krieger in view of
Takahashi. Id. at 11–12.
A prima facie case of obviousness may be shown where structural
similarities exist between the claimed and prior art compositions and reason
or motivation exists to make the claimed composition. In re Dillon, 919 F.2d
688, 692 (Fed. Cir. 1990) (en banc) (“[T]he structural similarity between
claimed and prior art subject matter, proved by combining references or
otherwise, where the prior art gives reason or motivation to make the
claimed compositions, creates a prima facie case of obviousness.”); In re
Best, 562 F.2d 1252, 1255–56 (Fed. Cir. 1977); In re Wilder, 429 F.2d 447,
450 (CCPA 1970).
Here, the Examiner’s findings support a prima facie case of
obviousness of claims 1 and 17 over Krieger in view of Takahashi.
Appellant’s argument fails to rebut such finding. In re Crish, 393 F.3d 1253,
1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir.
1990)) (“[W]hen the prior art evidence reasonably allows the PTO to
conclude that a claimed feature is present in the prior art, the evidence
‘compels such a conclusion if the applicant produces no evidence or
argument to rebut it.’”).
The Examiner’s findings are insufficient to demonstrate prima facie
obviousness of claims dependent on claim 1 (claims 2, 4, 5, 7, 8, and 12–
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12
17), independent claims 19 and 20, and dependent claim 21—all of which
recite limitations not addressed by the Examiner in the Final Office Action
or Answer. See generally Final Act., Ans.
We sustain the rejection of claims 1 and 17 as obvious over Krieger in
view of Takahashi, but do not sustain the rejection of claims 2, 4, 5, 7, 8,
12–17, and 19–21 over the same references.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
9–12, 14–
22, 28–33
103
Amano, Wong 20–22, 28–
33
1, 2, 4–7, 9–
12, 14–19
1, 2, 4, 5,
7, 8, 12–
17, 19–21
103
Krieger, Takahashi
1, 17
2, 4, 5, 7, 8,
12–16, 19–
21
Overall
Outcome
1, 17, 20–22,
28–33
2, 4–16, 18,
19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART