Martin Mischitz et al.

Patent Trials and Appeals Board

Aug 19, 2019

14535456 - (D) (P.T.A.B. Aug. 19, 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.
14/535,456 11/07/2014 Martin Mischitz P58079US 4225
81722 7590 08/19/2019
Viering, Jentschura & Partner mbB - Inf
c/o
444 Brickell Avenue
Suite 51270
Miami, FL 33131
EXAMINER
PATERSON, BRIGITTE A
ART UNIT PAPER NUMBER
2812
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte MARTIN MISCHITZ and KURT MATOY
_______________
Appeal 2018-003866
Application 14/535,456
Technology Center 2800
_______________
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 8, 11, and 12 of Application
14/535,456 under 35 U.S.C. § 102(a)(2) as anticipated and rejected claims
1–5, 8–13, and 21–26 under 35 U.S.C. § 103 as obvious. Final Act. (April
4, 2017). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 Infineon Technologies AG is identified as the applicant and real party in
interest. Appeal Br. 3.
Appeal 2018-003866
Application 14/535,456
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BACKGROUND
The ’456 Application describes a semiconductor device having a
porous metal layer and an electronic device containing such a
semiconductor. Spec. Title. In particular, the semiconductor device
includes a contact pad, a metal clip located over the contact pad, and a
porous metal layer located between the contact pad and the metal clip.
Spec. ¶ 3. The porous metal layer connects the contact pad and the metal
clip. Id.
Claim 8 is representative of the ’456 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
8. A semiconductor device comprising:
a contact pad;
a metal clip disposed over the contact pad; and
a porous copper layer disposed directly between the contact pad
and the metal clip, the porous copper layer mechanically
connecting the contact pad and the metal pad with each other.
Appeal Br. 19.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 8, 11, and 12 are rejected under 35 U.S.C. § 102(a)(2)
as anticipated by Taniguchi.2 Final Act. 2.

2 US 2014/0111956 A1, published April 24, 2014.
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Application 14/535,456
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2. Claims 1, 2, 4, 5, 8–11, 13, and 24 are rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Kikuchi3 and
Taniguchi. Final Act. 4.
3. Claims 1, 2, 4, 5, and 21–26 are rejected under 35 U.S.C. § 103
as unpatentable over the combination of Kikuchi, Taniguchi,
and Yilmaz.4 Final Act. 9.
4. Claims 8–11 and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Groenhuis5 and
Taniguchi. Final Act. 14.
5. Claims 3 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Kikuchi, Taniguchi, and
Schulze.6 Final Act. 17.
6. Claims 3 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Kikuchi, Taniguchi,
Yilmaz, and Schulze. Final Act. 19.
7. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Groenhuis, Taniguchi, and Kim.7 Final
Act. 22.
8. Claim 9 and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Taniguchi. Final Act. 23.

3 US 6,215,185 B1, issued April 10, 2001.
4 US 2011/0227207 A1, published September 22, 2011.
5 US 2008/0277772 A1, published November 13, 2008.
6 US 2011/0101416 A1, published May 5, 2011.
7 US 2010/0148316 A1, published June 17, 2010.
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Application 14/535,456
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DISCUSSION
There are three independent claims on appeal: claims 1, 8, and 21.
Appellant only presents specific arguments for reversal of the rejections of
these claims. Appeal Br. 9–16. We, therefore, limit our discussion to claims
1, 8, and 21 of the ’456 Application.
Anticipation Rejection of Claim 8. The Examiner rejected claim 8
under § 102(a)(2) as anticipated by Taniguchi. Final Act. 2–3 (citing
Taniguchi Fig. 11D, ¶¶ 131–35). For ease of reference, we reproduce
Taniguchi’s Figure 11D below:

Figure 11D is a diagram showing one of the steps of
manufacturing a semiconductor device according to one
of Taniguchi’s examples. Taniguchi ¶ 64.
In rejecting claim 8, the Examiner found that Sn member 116
corresponds to the claimed contact pad, electric wiring member 118
corresponds to the claimed metal structure disposed over the contact pad,
and metal from sheet 113 corresponds to the recited porous copper layer. Id.
Appellant argues that the Examiner erred by finding that Taniguchi
describes an electronic device comprising a porous copper layer. Appeal
Br. 10–12. In particular, Appellant argues that the structure shown in
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Application 14/535,456
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Taniguchi’s Figure 11D is not an electronic device because Sn layer 116,
electric wiring member 118, and metal foam 113, even if resting on one
another, are not physically bonded in Figure 11D. Id. at 12. In a subsequent
manufacturing step, the structures are physically bonded by heating.
Taniguchi ¶ 142. During this process, Sn member 116 melts and fills the
pores in metal foam 113, creating joining body 117. Id., Fig. 11E; ¶¶ 20,
139–40.
We cannot sustain the Examiner’s rejection. We agree with Appellant
that the structure shown in Taniguchi’s Figure 11D does not anticipate claim
8. Claim 8 requires that “the porous copper layer mechanically connect[] the
contact pad in the metal structure with each other.” For the following
reasons, we determine that metal foam 113 does not mechanically connect
Sn layer 116 and electric wiring member 118.
We begin by considering the proper interpretation of the word
“connecting.” During prosecution, the PTO gives the language of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account any definitions or other enlightenment provided by
the written description contained in the applicant’s specification. In re
Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997).
In this context, the verb “connect” means “to join or fasten together
usually by something intervening.” Connect | Definition of Connect by
Merriam-Webster, Merriam-Webster.com (July 26, 2019),
https://www.merriam-webster.com/dictionary/connect. The Specification
does not provide any evidence supporting an alternative meaning for this
claim term.
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We next consider how “mechanically” modifies “connecting.” In this
context, and consistent with the Specification, “mechanical” means “caused
by, resulting from, or relating to a process that involves a purely physical as
opposed to a chemical or biological change or process.” Mechanical |
Definition of Connect by Merriam-Webster, Merriam-Webster.com (July 26,
2019), https://www.merriam-webster.com/dictionary/mechanical. Thus,
“mechanically” limits the connection to a physical connection.
As depicted in Taniguchi’s Figure 11D, metal foam 113 does not
fasten Sn layer 116 to electric wiring member 118. Taniguchi ¶ 142.
Electric wiring member 118 is not fastened to anything until metal foam 113
and Sn layer 116 are heated to form joining body 117. Id. At that point,
electric wiring member 118 is joined to semiconductor chip 114 by joining
body 117. Id. (“Electric wiring member 118, semiconductor chip 114, and
joining body 117 can be joined together simultaneously.”). During this
process, both metal foam 113 and Sn layer 116 cease to exist. As Taniguchi
explains, when the connection between a semiconductor chip 114 and
electric wiring member 118 is formed, heat is applied to melt Sn layer 116.
The molten tin flows into the open cells of metal foam 113 and reacts with
the copper to form a copper-tin alloy. Id. ¶¶ 20, 74–75; Figs. 1, 2. The
copper-tin alloy fills the pores of metal foam 113, creating joining body 117.
Id. ¶ 142.
We find that Taniguchi’s electronic device does not anticipate claim 8
at any point during the manufacturing process. When metal foam 113 is
present, it does not “mechanically connect[] the contact pad and the metal
structure with each other.” When metal structure 118 is mechanically
connected to semiconductor chip 114, the elements of Taniguchi’s apparatus
that the Examiner has identified as corresponding to the porous copper layer
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and the contact pad have been transformed into joining body 117, which is
neither a porous copper layer nor a contact pad.8
The Obviousness Rejections of Claims 1, 8, and 21. In rejecting
claims 1 and 8 as unpatentable over the combination of Kikuchi and
Taniguchi, the Examiner relies upon Taniguchi as describing the use of a
porous copper layer as a conductive bonding layer between a metal clip and
a semiconductor device. See Final Act. 5. As discussed above, however,
Taniguchi’s copper foam layer does not form the conductive bonding layer.
Rather, Taniguchi describes the use of a solid mass comprising tin-copper
alloy and pure copper as the conductive bonding layer. Thus, the Examiner
has not established a prima facie case of obviousness.
Similarly, in rejecting claims 1 and 21 as unpatentable over the
combination of Kikuchi, Taniguchi, and Yilmaz, the Examiner relies upon
Taniguchi as describing use of a porous copper layer as the conductive
bonding layer between a metal clip and a semiconductor device. Final

8 In the Answer, the Examiner argues—apparently for the first time—that
joining body 117 is a porous layer because it still has pores, even though the
pores are filled with tin-copper alloy. Answer 3. This argument is not
persuasive because it is inconsistent with the normal meaning of the
adjective “porous.” See Porous | Definition of Porous by Merriam-Webster,
Merriam-Webster.com (July 26, 2019), https://www.merriam-
webster.com/dictionary/porous (defining porous as “possessing or full of
pores,” “permeable to fluids,” or “capable of being penetrated”). We note
that the Answer contains a truncated quotation of the definition of the word
“pore”: “a minute opening.” The full definition from the Examiner’s source
follows: “a minute opening especially in an animal or plant especially: one
by which matter passes through a membrane” or “a small interstice (as in
soil) admitting absorption or passage of liquid.” Pore | Definition of Pore by
Merriam-Webster, Merriam-Webster.com (July 26, 2019),
https://www.merriam-webster.com/dictionary/pore.
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Application 14/535,456
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Act. 10. As discussed above, Taniguchi actually describes the use of a solid
mass comprising tin-copper alloy and pure copper as the conductive bonding
layer. Nor does the Examiner rely upon a Yilmaz to remedy the deficiency
in the disclosures of Kikuchi and Taniguchi.
In view of the foregoing, we cannot affirm the rejections of claims 1,
8, and 21 as unpatentably obvious. We, therefore, are also constrained to
reverse the rejection of the dependent claims at issue.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claim 8 as
anticipated and the rejections of claims 1–5, 8–13, and 21–24 as obvious.
REVERSED