Lea Di Cioccio et al.

Patent Trials and Appeals Board

Jan 29, 2020

14504701 - (D) (P.T.A.B. Jan. 29, 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.
14/504,701 10/02/2014 Lea DI CIOCCIO 442486US41 8545
22850 7590 01/29/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEA DI CIOCCIO and YANN BEILLIARD

Appeal 2019-002352
Application 14/504,701
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JULIA HEANEY, and
BRIAN D. RANGE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.
Appellant’s invention is directed to a method of assembly of two
elements by direct bonding, the surface to be assembled of at least one of
these elements comprising portions of metal and portions of dielectric

1 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 Commissariat
a L’Energie Atomique et aux Energies Alternatives. Appeal Br. 2.
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material, the method can be used particularly for making microelectronic
and nanoelectronic devices (Spec. 1:6–9; Claim 1).
Claim 1 is representative of the subject matter on appeal:
A method of assembly of a first element and a second
element each having a back face and an assembly surface by
direct bonding, at least the assembly surface of the first element
comprising at least one first portion with at least one first metal
part surrounded by at least one dielectric material, said first
metal part having a free surface recessed from the dielectric
material at said assembly surface, said method comprising:
a step A) to bring the two assembly surfaces into contact
without application of pressure such that direct bonding is
obtained between the assembly surfaces, said step taking
place at at least one first temperature, said first and second
assemblies forming a stack with a thickness, and
a step B) taking place after step A), said step B)
comprising
B1) a step to hold the back faces of the first and
the second elements in position so that they are immobilized
only in a direction perpendicular to the assembly surfaces of the
first element and the second element and held at a fixed
distance between the stack thickness - 2 nm and the stack
thickness + 2 nm,
B2) a step to apply a heat treatment to said stack at
at least one second temperature which is higher than the first
temperature, the back faces of the first and the second elements
being still held in position at said fixed distance.
Appellant appeals the following rejections:
1. Claims 1–18 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
2. Claims 1–18 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor regards as the invention.
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3. Claims 1–10 and 12–18 are rejected under 35 U.S.C. § 103 as
unpatentable over Sadaka (US 2012/0252189 A1, published Oct.
4, 2012) in view of Lombardi (US 2012/0187180 A1, published
July 26, 2012) and Su (US 6,933,178, issued Aug. 23, 2005).
4. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over
Sadaka in view of Lombardi, Su, and Di Cioccio (US
2012/0100657 A1, published Apr. 26, 2012).

FINDINGS OF FACT & ANALYSIS
35 U.S.C. § 112(a)
The Examiner’s findings and conclusions regarding the rejection of
claim 1 as failing to comply with the written description requirement are
located on pages 2 to 3 of the Non-Final Action. The Examiner finds that
the Specification lacks support for the claim limitation that requires the
elements “are immobilized in only one direction perpendicular to the
assembly surfaces” (Non-Final Act. 2). The Examiner finds that Appellant’s
Figure 2C provides support for “restraining in the direction perpendicular to
the assembly surfaces and not to the left [or] right” (Non-Final Act. 2–3).
The Examiner finds that the Specification provides no evidence about any
restraint or lack of restraint into or out of the page direction in Figure 2C
(Non-Final Act. 3).
Appellant argues page 10, lines 10–22, page 11, lines 8–13, and
Figures 2B, 2C, and 3 describe immobilizing the first and second elements
only in a direction perpendicular to the assembly surfaces of the elements
(Appeal Br. 4). Appellant contends that the Specification discloses that the
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first and second elements are placed between two holding plates and the
only function of the holding plates is to prevent the elements from separating
from each other beyond a given clearance (Appeal Br. 4). Appellant
contends that another embodiment places the stack between two pistons,
which are activated only to hold the elements in contact with each other
(Appeal Br. 4). Appellant contends that a person of ordinary skill in the art
would understand that placing elements between holding plates or pistons
whose only stated purpose is to prevent the elements from separating from
each other would immobilize the elements only in the direction in which the
plates/pistons face each other (i.e., perpendicular to the assembly surfaces of
the elements) (Non-Final Act. 4).
The Examiner responds that the portions of the Specification cited by
the Appellant do not discuss not allowing movement in a lateral direction
(Ans. 3–4). The Examiner finds that the disclosure does not exclude an
element from immobilizing the elements in the direction into and out of the
paper or to the left and right parallel to the assembly direction (Ans. 4).
In assessing a written description rejection, the question to be
answered is whether a person of ordinary skill in the art would have
understood from the Specification that Appellant was in possession of the
claimed invention. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003). In the present case, we find that the
preponderance of the evidence favors Appellant’s argument of written
descriptive support. We agree that based on the pages 10 and 11 disclosures,
one of ordinary skill in the art would have recognized that Appellant
possessed the use of only plates or pistons to hold the first and second
element stack in a perpendicular direction (Figs. 2B, 2C, 3). Although the
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figures do not show the structure of the holding plate or piston in plan view,
Figure 3 shows that the pistons do not have walls around at least three edges
of the pistons (i.e., there is no indication that the back edge is enclosed or
has a restraining wall structure). In other words, there are no lateral
restraints shown in the piston embodiment on at least three of the edges.
The Figures 2B and 2C embodiments that use plates, not pistons, show a
holding plate 12 that is formed in a U-shape, where one side is closed.
However, Figures 2B and 2C show a space left between the closed end and
the laminate. Figure 2C with annotations is reproduced below.

Appellant’s Figure 2C shows the laminate inserted between two holding
plates 12 and 14. In our view, Appellant has shown possession of
immobilizing only in a direction perpendicular to the assembly surfaces of
the first and second element. We reverse the Examiner’s § 112(a) rejection
for lack of written description.

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35 U.S.C. §112(b)
The Examiner determines that the claim 1 requirement that the
elements “are immobilized in only one direction perpendicular to the
assembly surfaces ... and held at a fixed distance between the stack thickness
–2nm and the stack thickness +2nm” is indefinite (Non-Final Act. 3). The
Examiner determines that it is unclear how something can be immobilized
when it can still move at least 2 nm (Non-Final Act. 3).
Appellant argues that a person of ordinary skill in the art would
understand in light of the Specification at page 10 that “immobilized” refers
to the laminate being held at a fixed distance E and the elements are
prevented from separating from one another (Appeal Br. 7). Appellant
contends that the ±2 nm limitation may allow clearance for the stack to slide
into position between the plates (Appeal Br. 7).
The Examiner responds that it is unclear how the recitation of +2 nm
which allows 2 nm of space for the stack to move within would immobilize
the stack (Ans. 4).
In assessing whether a claim is indefinite, we determine whether those
skilled in the art would understand what is claimed when the claim is read in
light of the Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986). In the present case, page 10 of the
Specification describes that the stack of first and second elements is placed
between two plates spaced apart by a distance E, within the range of E ±
2nm. The stack is slid between the plates and the first and second elements
are held in contact with each other but no force is applied to bring them
together (Spec. 10:15–16). In light of the description in the Specification,
we determine that preponderance of the evidence supports that one of
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ordinary skill in the art would have understood that immobilizing the first
and second elements means that the first and second elements are held
between two plates or pistons at a fixed distance that ranges from E ± 2nm
so that the two elements may be bonded together.
We reverse the Examiner’s § 112(b) rejection.

35 U.S.C. §103
Appellant argues the following groups of claims: (1) claims 1–8 and
11–17, (2) claims 9 and 10, and (3) claim 18 (Appeal Br. 7–15). We select
claim 1, claims 9 and 10, and claim 18, respectively, as representative of
each grouping.

Claim 1
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 1 over Sadaka in view of Lombardi and Su are located on
pages 4 to 5 of the Non-Final Action. The Examiner finds that Sadaka
teaches the subject matter of claim 1, except for the step of holding the back
faces of the first and second elements in position so that they are
immobilized only in a direction perpendicular to the assembly surfaces of
the first element and the second element and held at a fixed distance between
the stack thickness ± 2 nm and the back faces are held in position at said
fixed distance during the heating step (Non-Final Act. 4–5). The Examiner
finds that Lombardi teaches a snug fitting, no space, fixture that has a lower
coefficient of thermal expansion than the laminate it holds, so that upon
heating the laminate is prevented from warping due to the upper and lower
planar holding devices which are larger than the laminate (Non-Final Act.
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5). The Examiner finds that Su teaches that only the top and bottom surfaces
of a laminate of holding strip 10 and dies 11 are contacted to prevent
warping and delamination (Non-Final Act. 5). The Examiner denominates
the combined teachings of Lombardi and Su as the “Lombardi collective”
(Non-Final Act. 5; Ans. 8). The Examiner concludes that it would have
been obvious to incorporate the anti-warp concept of the Lombardi
collective into Sadaka’s method and place Sadaka’s assembly between
opposing surfaces of a fixture during the heating step in order to prevent
warping/bending/delamination by keeping the stack immobilized (Non-Final
Act. 5).
Appellant argues that the Examiner’s rejection is based upon an
incomplete reading of Lombardi because Lombardi does not teach
immobilizing only in one direction (Appeal Br. 8–9). Appellant contends
that in addition to holding devices 205 and 210 that contact the stack in a
perpendicular direction, Lombardi uses plates with stepped portions that
immobilize the stack in the lateral direction (Appeal Br. 8–9). Appellant
argues that Lombardi restrains movement in two directions, not only in the
perpendicular direction (Appeal Br. 9). Appellant argues that the Examiner
has not provided any reason why it would have been obvious to do away
with Lombardi’s stepped structure that limits lateral expansion and warping
(Appeal Br. 9).
Appellant argues that Su does not teach holding the back faces of the
stack elements in position so that they are immobilized in a direction
perpendicular to the assembly surfaces of the elements and held at a fixed
distance (Appeal Br. 10). Appellant contends that Su uses a vacuum force to
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move dies 11 and strip 10 toward the submold 14 and, thus, the back faces of
dies 11 are not held so as to immobilize the stack (Appeal Br. 11).
Appellant contends that the combined teachings of Lombardi and Su
would have suggested that pressure needs to be applied to prevent warping
and bending (Appeal Br. 12). Appellant contends that the pressing required
by Lombardi and Su is not the same as the “hold/contact” required by the
claims (Appeal Br. 12). Appellant contends that it is unclear how the plates
could press on the stack while keeping a fixed distance on the nanometer
scale (Appeal Br. 12).
Although Lombardi teaches a stepped feature on the plate to control
lateral expansion, the Examiner relies on Lombardi as teaching that it is
known to restrain a laminate that is being bonded to avoid warping and
bending of the laminate (Non-Final Act. 5). Lombardi teaches that the space
220 in fixture 200 is sized and configured so that there is no room (space)
for laminate 106 to expand or contract in the X, Y, or Z directions
(Lombardi ¶ 28). Lombardi teaches that the lateral constraint (i.e., the Z-
restraint) can be controlled by controlling the size of the stepped portion
(Lombardi ¶ 29). Stated differently, Lombardi recognizes that the amount of
constraint includes complete constraint where there is no space for
expansion and some modification to the stepped features to permit less Z-
constraint as desired. Contrary to Appellant’s argument, Lombardi teaches
modifying the stepped feature size to control the amount of Z-constraint.
Based on Lombardi’s teachings, if little Z-constraint is desired, then a size of
the stepped feature would have been sized to meet that requirement.
The Examiner relies upon Su for the teaching to use a vacuum to hold
a laminate in a fixture, where the laminate does not touch the side walls, and
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prevent warping in the laminate (Non-Final Act. 5). In other words, the
combined teachings of Lombardi and Su would have suggested holding
Sadaka’s laminate structure so that the ends are spaced from the sides of the
fixture so as to prevent warping and delamination in the device.
Although Su uses a vacuum to hold the dies 11 and strip 10 that does
not mean that the vacuum moves the dies 11 and strip 10 toward submold
14. Su discloses that the negative pressure force (e.g., vacuum) causes the
“dies 10 [sic 11] [to] securely abut the top surface 140 of the submold 14”
(Su col. 4, ll. 52–53). In other words, the negative pressure force does not
cause the dies 11 to move, but rather securely holds them in an abutting
relationship with the submold 14. Su discloses that the top mold 130 “firmly
clamps” the substrate strip 10 between the top mold 130 and bottom mold
131 (Su col. 4, ll. 40–42). Su’s Figure 1C shows the aforementioned column
4 disclosure where no space is shown between the top mold 130, strip 10,
dies 11, submold 14, and bottom mold 131 in the closed fixture 13. Su’s
Figure 1C only shows space between the sides of the bottom mold 131 and
strip 10 and dies 11. Su further discloses that the attraction force (i.e.,
negative pressure force or vacuum) is sufficient to counteract thermal
stresses produced in the substrate strip 10, thereby preventing warpage and
delamination in the combined structure of substrate strip 10 and dies 11 (Su
col. 4, ll. 49–56). Appellant’s argument to the contrary is not persuasive.
Appellant’s argument that the combined teachings of Su and
Lombardi would have taught that applying pressure is required to prevent
warping and bending does not show reversible error in the Examiner’s
rejection. Claim 1 requires a step A where two assembly surfaces are “in[]
contact without application of pressure such that direct bonding is obtained
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between the . . . first and second assemblies forming a stack.” The
Specification describes this step A as requiring that the first and second
elements of the stack are brought together to bond to one another by direct
bonding (Spec. 9:20–30). The Specification describes that “application
without pressure” means “the lack of any external pressure applied to the
elements when they are brought into contact, contact being achieved by the
weight of the top element alone” (Spec. 8:19–21). The Specification
describes that “application without pressure” in the context of the flattening
step means a pressure of less than 3 kN or even less than 1 kN (Spec. 8:21–
23). Claim 1 recites step B that requires holding the back faces of the first
and second elements in position so that they are immobilized only in a
direction perpendicular to the assembly surfaces of the first and second
elements and held at a fixed distance between the stack thickness ± 2 nm.
Step B occurs after step A as recited in claim 1. Claim 1 does not specify
that no pressure is applied during step B. As the Examiner finds, holding the
stack elements so the thickness equals the stack thickness minus 2 nm would
impart some pressure on the stack of elements (Ans. 8). Even if claim 1
were construed to require application without pressure during step B, that
does not preclude applying a force of less than 3 kN to the first and second
elements. The Specification includes an embodiment where pistons are used
to hold the elements in contact (Spec. 11:8–13).
Appellant’s second part of this argument states that it is unclear how
the plates could press on the stack while keeping a fixed distance on the
nanometer scale (Appeal Br. 12). Su, however, shows that top mold 130
rests on top of bottom mold 131 and Su describes that mold 130 firmly
clamps the strip 10 into place and the exhauster counteracts thermal stresses
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(col. 4, ll. 40–42; 49–52). Su further shows that strip 10 rests on a ledge
formed in bottom mold 131 (Fig. 1C). In other words, the negative pressure
applied via external exhauster counters the thermal stresses while keeping
dies and adhesively attached strip 10 abutting submold 14. Su’s “attractive
force” does not move dies 11 and strip 10, but rather maintains a fixed,
abutting relationship to counter the thermal stresses.
On this record, we affirm the Examiner’s § 103 rejection of claims 1–
8 and 11–17 based upon the preponderance of the evidence.

Claims 9 and 10
Claim 9 depends from claim 1 and recites “said stack being curved,
said method comprises a stack flattening step after step A) and before and/or
during the heat treatment in order to eliminate said curvature.”
Appellant argues that the Examiner’s rejection is based on a
conclusory obviousness statement that it would have been obvious to modify
Sadaka as modified by Lombardi and Su to include a stack flattening step in
which the force is less than 3 kN as recited in claims 9 and 10 (Appeal Br.
13). Appellant argues that the Examiner’s rejection is based upon common
sense, but the Examiner provides no evidence to substantiate this finding
(Appeal Br. 13; Reply Br. 9).
The Examiner finds that flattening an item before placing it inside
something else is performed in everyday actions such as placing a paper in
an envelope, placing money in a wallet, or putting a comic book into a
protective sleeve (Non-Final Act. 8). The Examiner concludes that it would
have been obvious to flatten the stack, if possible, before placing it into the
fixture in order to be able to put the stack inside the fixture instead of
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throwing the stack away (Non-Final Act. 8). The Examiner finds that it
would have been less costly to flatten a curved stack instead of throwing the
stack away (Non-Final Act. 8).
We note that Appellant does not specifically contests the Examiner’s
finding that it has been conventionally known to flatten an item before
inserting the item into another item, such as, for example, a piece of paper
before inserting the paper into an envelope. The examples provided by the
Examiner in the rejection of claim 9 amount to official notice that it was
known to flatten an item before placing that item in an enclosure. The
Examiner determines that based upon this general understanding in the art, a
person of ordinary skill in the art would have flattened a curved stack before
inserting the stack into a fixture. Appellant contends that the examples
provided by the Examiner amount to relying on common knowledge as a
basis for the rejection (Reply Br. 9). We disagree. Appellant does not
contest the Examiner’s finding that it was known to flatten a piece of paper
before placing into an envelope, flatten money before placing in a wallet, or
flatten a comic book before sliding it into a sleeve.2 As such, these findings
of the Examiner become conclusive. In re Ahlert, 424 F.2d 1088, 1091
(CCPA 1970). Appellant also does not provide a persuasive argument why a
person of skill in the art would not have combined the flattening of this
known prior art (for example, flattening paper and money) with the
teachings of the other cited references. Based upon the Examiner’s
uncontested findings and reasoning, we find that the preponderance of the

2 We note that the Examiner’s reliance on these findings extends back to the
Non-Final Action dated August 10, 2016. Appellant had ample time to
challenge these findings, but has not specifically done so.
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evidence favors the Examiner’s determination that flattening the stack before
placing the stack into a fixture would have been obvious.
Regarding claim 10, the Examiner finds that the pressure applied
would have been within the skill of the ordinary artisan since too much
pressure would plastically deform or break the stack making the stack
useless (Non-Final Act. 9). Appellant does not specifically challenge or
otherwise show reversible error with this finding of the Examiner.
On this record, we affirm the Examiner’s § 103 rejection of claims 9
and 10.

Claim 18
Claim 18 depends from claim 1 and recites “wherein the at least one
second temperature is selected as a function of a distance of the recess if the
surface of the first metal part from the dielectric material at the assembly
surface at the beginning of the heat treatment.”
Appellant argues that Sadaka discloses several annealing processes
but does not indicate that the annealing temperature is selected based upon
the size of the voids in the bond pads or the distance of the bond pad surface
from the dielectric material surface (Appeal Br. 14). Appellant contends that
Sadaka’s purpose is not to eliminate voids by using the annealing steps
(Appeal Br. 14). Appellant contends that the Examiner has not established
that Sadaka inherently teaches the subject matter of claim 18 (Appeal Br.
15).
The Examiner finds that Sadaka’s paragraphs 47–51, 66, 76, and 101–
113 teach that a second temperature is a function of the distance of the
surface of the first metal part from the dielectric material at the assembly
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surface at the beginning of the heat treatment (Non-Final Act. 10; Ans. 9).
The Examiner explains that Sadaka is concerned with the depth of the void
and not the length since the expansion that Sadaka is concerned with is in
the direction perpendicular to the bonding surfaces (Ans. 9).
Appellant counters that Sadaka does not describe assessing the size of
the voids and basing any temperature on the assessed size thereof (Reply Br.
10). Appellant contends that Sadaka’s teaching that some of the voids may
be reduced in size or eliminated as a result of the annealing process is not
commensurate with the step of affirmatively basing the annealing
temperature on the size of the voids (Reply Br. 10). We agree.
The Examiner cites to various paragraphs in Sadaka, but the Examiner
does not explain how the disclosure in those paragraphs teaches the subject
matter of claim 18. We have reviewed those paragraphs in Sadaka cited by
the Examiner. We do not find any explicit or implicit setting of the
annealing temperature (i.e., second temperature) as a function of a distance
of the recess of the surface of the first metal part from the dielectric material
as recited in claim 18. The Examiner has not satisfied the initial burden of
establishing a prima facie case of obviousness of claim 18. We reverse the
Examiner’s § 103 rejection of claim 18.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–18 112(a) Written Description  1–18
1–18 112(b) Indefiniteness 1–18
1–10, 12–18 103 Sadaka, Lombardi,
Su
1–10,
12–17
18
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
11 103 Sadaka, Lombardi,
Su, Di Cioccio
11
Overall
Outcome
1–17 18

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).

AFFIRMED IN PART