Lee Han Meng@. Eugene Lee et al.

Patent Trials and Appeals Board

Jul 30, 2019

14167647 - (D) (P.T.A.B. Jul. 30, 2019)

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.
14/167,647 01/29/2014 Lee Han Meng@ Eugene Lee TI-73520 3949
23494 7590 07/30/2019
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
DINH, TUAN T
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE HAN MENG@ EUGENE LEE,
ANIS FAUZI BIN ABDUL AZIZ, and KHOO YIEN SIEN
____________

Appeal 2018-008744
Application 14/167,647
Technology Center 2800
____________

Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–4, 23, and 25–27. (Appeal Br. 4–8.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.

1 This Decision includes citations to the following documents:
Specification filed January 29, 2014 and as amended September 6, 2016
(“Spec.”); Final Office Action mailed September 8, 2017 (“Final Act.”);
Appeal Brief filed March 1, 2018 (“Appeal Br.”); Examiner’s Answer
mailed July 9, 2018 (“Ans.”); and Reply Brief filed September 10, 2018
(“Reply Br.”).
2 Appellants identify Texas Instruments Incorporated as the real party in
interest. (Appeal Br. 3.)
Appeal 2018-008744
Application 14/167,647

2
THE INVENTION
Appellants state the invention relates to the field of semiconductor
devices and processes, and in particular to semiconductor systems with an
interposer of half-etched and molded sheet metal. (Spec. ¶ 1.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. An interposer for semiconductor devices comprising:
a sheet having a first surface in a first plane for attachment to at
least one semiconductor die, a second surface in a parallel
second plane for attachment to a lead frame, and a uniform first
height between the surfaces;
the sheet patterned in metallic zones separated by gaps, the
zones including at least a first metallic zone having a metal of
the uniform first height across the entire first metallic zone, and
at least a second metallic zone having the metal of a first height
and a second height, the second height being smaller than the
first height, and the uniform first height equal to the first height;
and
an insulating material filling the gaps and an area between the
first and the second heights.
(Appeal Br. 10, Claims Appendix.)
Claim 25 is also independent and recites an interposer including a
plurality of conductive zones and a plurality of insulating zones, where a
lead frame is attached to the interposer. (Id. at 10–11.)

REJECTION
The Examiner rejected claims 1–4, 23, and 25–27 under 35 U.S.C.
§ 103 as obvious over Glenn et al. (US 6,281,568 B1, issued August 28,
2001, “Glenn”) and Joshi et al. (US 2012/0326287 A1, published December
27, 2012, “Joshi”). (Final Act. 2–6; Ans. 2–5.)
Appeal 2018-008744
Application 14/167,647

3
We limit our discussion to independent claims 1 and 25, which is
sufficient for disposition of this appeal.

ISSUES
The Examiner found Glenn discloses an interposer having the
structure recited in claim 1 with the exception that Glenn does not
specifically disclose the second surface of the sheet is for attachment to a
lead frame. (Final Act. 2–4; Ans. 2–3.) Similarly, for claim 25, the
Examiner found Glenn discloses an interposer having the structure recited in
the claim, but Glenn does not disclose the interposer is attached to a lead
frame. (Final Act. 4–5; Ans. 4–5.) The Examiner found Joshi discloses a
DC/DC converter power module including an interposer attached to a lead
frame. (Final Act. 4, 5; Ans. 3–5.) The Examiner determined it would have
been obvious “to have a teaching of Joshi employed in the device of Glenn
in order to form a complete power converter package for electrical connector
to external device.” (Final Act. 4, 5.) In the Answer, the Examiner further
determined it would have been obvious to “have a teaching of Joshi
employed in the device of Glenn in order to provide a heat dissipation.”
(Ans. 4, 5.)
Appellants argue that even if Glenn and Joshi were properly
combined, the combination fails to disclose or suggest all the limitations of
claim 1, where claim 1 recites a sheet having a first surface in a first plane
for attachment to at least one semiconductor die and a second surface in a
parallel second plane for attachment to a lead frame, and a uniform first
height between surfaces. (Appeal Br. 5.)
Appeal 2018-008744
Application 14/167,647

4
Appellants argue the Examiner did not provide sufficient support or
explanation for the “mere conclusory statement” that it would have been
obvious to combine Joshi and Glenn. (Appeal Br. 4–5.) Appellants argue
one of ordinary skill in the art would have no reason to attach the finished
product of Glenn to another lead frame. (Id. at 5.) Appellants also argue
that Glenn does not disclose an interposer having a sheet with a first uniform
height between the surfaces. (Id. at 5–6.) In response to the Examiner’s
statements in the Answer, Appellants contend the Examiner does not explain
how the combination of Glenn and Joshi provides heat dissipation. (Reply
Br. 3.)
Accordingly, the dispositive issues are:
whether the Examiner erred in finding Glenn discloses a sheet with a
“uniform first height” as recited in claim 1; and
whether the Examiner erred in determining the combination of Glenn
and Joshi renders obvious “a lead frame is attached to the interposer” as
recited in claim 25?

DISCUSSION
Claim 1
We agree with Appellants that the combination of Glenn and Joshi
fails to disclose an interposer as recited in claim 1. 3 At the outset, we

3 As to Appellants’ argument that one of ordinary skill would not consider
the finished package device of Glenn to be an interposer (Appeal Br. 5), we
observe that the Specification discloses “embedded structures have been
employed” as interposers, including those where “chips have been inserted
and electrically connected into multi-metal-layer substrates, which can serve
as completed structures or as interposers.” (Spec. ¶ 6.) In this regard, we
Appeal 2018-008744
Application 14/167,647

5
observe claim 1 recites “a sheet having a first surface in a first plane for
attachment to at least one semiconductor die, a second surface in a parallel
second plane for attachment to a lead frame.” The Examiner emphasized the
second surface is “for attachment.” (Final Act. 2; Ans. 2.) The Examiner
stated: “the phrase of FOR plus function is not a positive structural
limitation.” (Ans. 2.) Although it is true in order to satisfy claim 1, the
second surface of the sheet need not be attached to a lead frame, the
structure disclosed in the prior art at least must be capable of being attached
to a lead frame in order to satisfy claim 1. See In re Schreiber, 128 F.3d
1473, 1478–79 (Fed. Cir. 1997).
As discussed above, Appellants argue that Glenn does not disclose a
sheet with a first uniform height between the surfaces. The Examiner found
height “H” in Figure 3 of Glenn corresponded to a uniform first height
between the surfaces.4 (Final Act. 2–3.) The Examiner found further the
metallic zones “includ[ed] at least a first metallic zone (the zone or area

observe that claim 1 recites the open transitional phrase “comprising” such
that the claim allows for other structures besides the sheet and insulating
material recited therein.
4 Appellants’ argument that the tie bar 21, which the Examiner found to
correspond is a disposable part of the lead frame 20 disclosed in Glenn, and
is removed in producing the final encapsulated device during the process
disclosed therein is not persuasive. (Appeal Br. 5; Glenn, col. 4, ll. 29–55,
col. 5, ll. 43–54; Figs. 1 and 2.) The Examiner clearly relied on Figure 3 of
Glenn to map the claim elements of the sheet recited in claim 1 and Glenn
discloses that Figure 3 is a cross-sectional view of the die pad and leads of
Figure 2, taken inside the dam bar 29, which does not include the disposable
portion of the lead frame 20, tie bar 21. (Final Act. 3; Ans. 2–3; Glenn, col.
3, ll. 43–45.)
Appeal 2018-008744
Application 14/167,647

6
included the thickness between 31, 32) having a metal of the uniform first
height (H) across the entire first metallic zone.” (Id. at 3.)
Figure 3 of Glenn is reproduced below.

Figure 3 is a cross-sectional side view of the die pad 22 and leads 30
of the leadframe according to Glenn depicting leads 30 including first
surface 31 and second surface 32, as well as third surface 33 recessed a
distance H1 from second surface 32. (Col. 3, ll. 41–45; col. 5, ll. 29–43.)
As to the first metallic zone, we understand the Examiner to be
referring to leads 30, which include the zones or areas including thickness
between first surfaces 31 and second surfaces 32. Figure 3 shows leads 30
do not have a uniform height across the entirety of the leads 30, the first
metallic zone. To the extent the Examiner is relying on a portion of lead 30
as the first metallic zone, such does not satisfy claim 1, which recites the
gaps separate and thus define the metallic zones. Thus, leads 30 do not have
“a metal of the uniform first height across the entire first metallic zone” as
recited in claim 1. Accordingly, we agree with Appellants that Glenn fails to
disclose the uniform first height recited in claim 1.
Therefore, we reverse the Examiner’s rejection of claim 1, as well as
dependent claims 2–4 and 23.

Appeal 2018-008744
Application 14/167,647

7
Claim 25
Claim 25 expressly recites “wherein a lead frame is attached to the
interposer.” The Examiner found Glenn discloses solder bumps attached to
the second surface of the sheet to provide a connection to an external device,
but Glenn does not disclose the solder bumps are for attachment to a lead
frame. (Ans. 4–5; Final Act. 5.) Although the Examiner points to Joshi, and
in particular Joshi’s disclosure of a conductive clip attached to a lead frame,
we agree with Appellants, that the Examiner has not provided sufficient
reasoning to explain how Joshi’s disclosure provides support for the position
that a person of ordinary skill in the art would have attached a lead frame to
Glenn’s solder bumps, the deficiency in Glenn identified by the Examiner.
In the Final Action, the Examiner simply found Joshi discloses a
DC/DC converter power module including an interposer 321 connected to a
lead frame 303. (Final Act. 5, citing Joshi, Fig. 3.) In the Answer, the
Examiner made additional findings that Joshi discloses an interposer 321
with a FET component 201 formed on a first surface of a conductive clip
309, which the Examiner found to be equivalent to a sheet. (Ans. 5, citing
Joshi, Fig. 3.) The Examiner further found Joshi discloses a second or
bottom surface of the clip 309 attached to the lead frame 303. (Id.)
We agree with Appellants that the Examiner has not provided
sufficient explanation in order to support the rejection. Although the
Examiner turned to Joshi for disclosing attachment of a conductive clip to a
lead frame, it is unclear to us how the Examiner is using that teaching in
combination with Glenn and in what capacities the two prior art references
are being combined.
Appeal 2018-008744
Application 14/167,647

8
The Examiner does not sufficiently explain how such a combination
would result in the interposer recited in claim 25 given the deficiency in
Glenn identified by the Examiner. Nor does the Examiner provide sufficient
reasoning with rational underpinning as to how that resulting combination
would “provide a heat dissipation” or “form a complete power converter
package for electrical connector to external device.”
Accordingly, we reverse the rejection of claim 25 and dependent
claims 26 and 27.

DECISION
We reverse the Examiner’s decision rejecting claims 1–4, 23, and 25–
27.

REVERSED