Roden Topacio et al.

Patent Trials and Appeals Board

Jan 26, 2021

2020000530 (P.T.A.B. Jan. 26, 2021)

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.
15/395,859 12/30/2016 Roden R. Topacio 120842-US-DIV 6447
163037 7590 01/26/2021
Advanced Micro Devices, Inc.
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
Austin, TX 78701
EXAMINER
CHOUDHRY, MOHAMMAD M
ART UNIT PAPER NUMBER
2816
NOTIFICATION DATE DELIVERY MODE
01/26/2021 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):
eofficeaction@appcoll.com
kate@klspatents.com
office@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODEN R. TOPACIO, SUMING HU, and
YIP SENG LOW
Appeal 2020-000530
Application 15/395,859
Technology Center 2800
Before TERRY J. OWENS, DONNA M. PRAISS, and
SHELDON M. MCGEE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge MCGEE.
Opinion dissenting filed by Administrative Patent Judge OWENS.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as ATI Technologies
ULC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to an apparatus comprising a semiconductor
chip with various layers thereon. Claim 8, reproduced below, is illustrative
of the claimed subject matter, with the key limitation italicized for emphasis:
8. An apparatus, comprising:
a semiconductor chip having a conductor pad;
a first underbump metallization layer on a semiconductor
chip, the first underbump metallization layer having a hub
positioned over the conductor pad, a first portion extending
laterally from the hub, and a spoke connecting the hub to the first
portion; and
a polymer layer on the first underbump metallization layer,
the polymer layer including a first opening in alignment with the
hub.
Appeal Br. 24–25 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal:
I. Claims 8, 10–15, and 17–20 under 35 U.S.C. § 102(a) as
anticipated by Hwang (US 2002/0185721 A1, published Dec.
12, 2002) (Ans. 3); and
II. Claims 1–7, 9, and 16 under 35 U.S.C. § 103 as unpatentable
over Hwang in view of Lin (US 2004/0016948 A1, published
January 29, 2004) (Ans. 5).
OPINION
We review the appealed rejections for error based on the issues that
Appellant argues with reasonable specificity. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (stating that rejections are
reviewed “for error based upon the issues identified by appellant, and in
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light of the arguments and evidence produced thereon” and that “[f]iling a
Board appeal does not, unto itself, entitle an appellant to de novo review of
all aspects of a rejection.”); 37 C.F.R. § 41.37(c)(1)(iv) (2019) (“The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.”).
Rejection I
The Examiner finds that Hwang discloses each element of the rejected
claims. Final Act. 3–5. Appellant presents an argument specific to
independent claim 8, and relies on this argument for claims 10–15 and 17–
20. Appeal Br. 14–16.2 Thus, all claims subject to this rejection stand or
fall with claim 8.
Specifically, Appellant argues that Hwang does not disclose “a hub
positioned over the conductor pad.” Appeal Br. 15. Rather, according to
Appellant, the portion of Hwang’s underbump metallization layer that the
Examiner maps to the claimed “hub”––i.e., Hwang’s portion 68––is not
“over” item 54, which the Examiner maps to the claimed “conductor pad.”
Id. at 15–16. Appellant provides the following annotated drawing of
Hwang’s Figure 16 for support:

2 Appellant also relies on this argument for dependent claims 9 and 16
rejected as obvious, addressed infra. Appeal Br. 21. It is unpersuasive for
the same reasons we provide here.
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We disagree with this argument and sustain the Examiner’s rejection.
At issue in this appeal is the proper construction of the limitation: “the first
underbump metallization layer having a hub positioned over the conductor
pad”––i.e., whether the phrase “positioned over” modifies the term “hub” or
the phrase “first underbump metallization layer.”
Appellant’s argument implies the correct claim construction is that the
hub is positioned over the conductor pad. Appeal Br. 15–16. This
argument, however, is not directly responsive to the Examiner’s apparent
interpretation of the claim––that the first underbump metallization layer is
positioned over the conductor pad. See Final Act. 4 (mapping the first
underbump metallization layer to Hwang’s layer 60, then stating that “(part
of 60 is over 54)”); Ans. 3. Because Appellant’s argument does not squarely
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address the substance of the Examiner’s rejection, or identify why the
Examiner’s claim construction is unreasonable, it reveals no error therein.
Furthermore, even if Appellant’s apparent construction is the correct
one, we would not be persuaded of reversible error in the Examiner’s
rejection. On appeal, Appellant provides no evidence or argument
explaining why the phrase “positioned over” must mean “positioned directly
over” so as to include both horizontal and vertical directions. Here,
Hwang’s layer 60 is located on top of pad 54. See Hwang ¶ 28 (“under
barrier metal (UBM) 60 [] is formed on the chip pad 54 and over first
polymer layer 58.”); Figs. 9, 16 (depicting layer 60 as located on top of chip
pad 54). Hwang’s layer 70 is then placed on top of layer 60, and concave
pattern 68, which the Examiner maps to the claimed “hub,” is formed
therein. Hwang ¶¶ 36–37; Figs. 14, 16. Therefore, because Hwang’s “hub”
68 is located several layers above the “conductor pad” 54, it follows that the
“hub is positioned over the conductor pad” in the vertical direction.
Because Appellant identifies no reversible error in the Examiner’s
rejection of claim 8, we sustain the rejection, along with the rejection of
claims 10–15 and 17–20, which are not argued separately.
Rejection II
The Examiner undisputedly finds that Hwang discloses each element
of claim 1 except for the requirement that the polymer layer have “a second
opening in alignment with the spoke.” Final Act. 6. The Examiner
addresses this difference by turning to Lin, which the Examiner undisputedly
finds discloses this limitation. Id. The Examiner determines it would have
been obvious to modify Hwang’s device to have a second opening in line
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with the spoke, as taught by Lin, “in order to provide connection in a semi-
conductor device.” Id.
Appellant’s sole argument on appeal of this rejection is that Hwang
teaches away from a combination with Lin because it “would require the
fabrication of ‘another opening’ in . . . polymer layer 74 somewhere to the
left of the opening 76.” Appeal Br. 19. Appellant contends that doing so
“would both serve no purpose in light of what Hwang [] is trying to
accomplish and also potentially interfere with the post reflow extent of the
solder bump 80.” Id. at 20.
This argument is unpersuasive. Appellant provides no detail
regarding what it believes Hwang “is trying to accomplish” (Appeal Br. 20)
and how Hwang “criticize[s], discredit[s], or otherwise discourage[s] the
solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Further, Appellant’s argument assumes, without explanation, that a
particular placement of the second opening would be required. Appeal Br.
19. At best, this argument addresses whether Lin’s secondary opening could
be bodily incorporated into Hwang’s device, which is not the relevant
inquiry for obviousness. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Because Appellant identifies no reversible error in the Examiner’s
rejection of claim 1, we sustain the rejection, along with the rejection of
claims 2–7, 9, and 16, which are not argued separately.

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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
8, 10–15,
17–20
102(a) Hwang 8, 10–15,
17–20

1–7, 9, 16 103 Hwang, Lin 1–7, 9, 16
Overall
Outcome
1–20
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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OWENS, Administrative Patent Judge, dissenting.
For the following reasons I dissent from the affirmance of the
rejections under 35 U.S.C. §§ 102(a) and 103.
Rejection under 35 U.S.C. § 102(a)
I need address only the independent claims (8 and 15). Those claims
require a semiconductor chip comprising a first underbump metallization
(UBM) layer having a hub positioned over a conductor pad, and a spoke
connecting the hub to a first portion of the UBM layer.
Hwang discloses a semiconductor chip comprising a UBM (60) below
a redistribution pattern (64) that has a portion extending over a chip pad (54)
and has a bump pad (76) portion with a concave pattern (68) therein (¶¶ 34,
37, 39, 42; Figs. 16–18). The concave pattern (68) increases the overlapping
area, and consequently the adhesion, between the bump pad (76) and a
solder bump (80) formed on a UBM (78) covering the bump pad (76)
(¶¶ 39, 41; Fig. 17).
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
The Examiner finds that because part of Hwang’s UBM 60 is over the
chip pad (54) and part of it is below the redistribution pattern (64)’s concave
pattern (68), the concave pattern (68) is over the chip pad (54) (Final Act. 4).
The Examiner further finds, based upon a dictionary definition of “align” as
“to bring into a line or alignment,” that Hwang’s polymer layer (74) opening
surrounding the concave portion (68) in the redistribution layer (64) is in
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alignment with the portion of UBM 60 below concave pattern 68, and that
another portion of UMB 60 extends over the chip pad (54), so the concave
pattern (68) is over the chip pad (54) (Ans. 7–9).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Examiner does not address the
meaning of the claim term “over” indicated by the Appellant’s Specification.
The Appellant’s Specification paragraphs 34 and 35 and Figures 2 and 3
indicate that the Appellant uses the term “over” according to its ordinary
meaning with respect to the hub (100) being over the conductor pad (50),
i.e., the conductor pad (50), passivation structure (55), and hub (100) have a
bottom-to-top relationship. Hwang’s Figure 16 shows that the concave
pattern (68) is over a portion of the UBM (60) and vertically above and
spaced horizontally from the chip pad (54), not over the chip pad (54)
according to the broadest reasonable interpretation of “over” consistent with
the Appellant’s Specification.
The Examiner finds that Hwang’s UBM 60 has “a spoke connecting
the hub to the first portion (Fig. 18; Para 0042)” (Final Act. 4).
The Examiner does not point out, and it is not apparent, where those
portions of Hwang disclose a spoke.
Thus, the Examiner has not established a prima facie case of
anticipation of the Appellant’s claimed apparatus by Hwang. The rejection
under 35 U.S.C. § 102(a), therefore, should be reversed.

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Rejection under 35 U.S.C. § 103
I need address only the sole independent claim, i.e., claim 1. That
claim requires “a spoke connecting the hub to the first portion” and “a
polymer layer having first opening in alignment with the hub and a second
opening in alignment with the spoke.”
The Examiner finds that Hwang discloses “a spoke connecting the hub
to the first portion (Fig. 18; Para 0042)” (Final Act. 6).
As stated above regarding the rejection under 35 U.S.C. § 102(a), the
Examiner does not point out, and it is not apparent, where those portions of
Hwang disclose a spoke.
Lin discloses a semiconductor device comprising a polymer layer (20)
having openings (22, 36, 38) aligned with passivation openings (19) for
connecting contacts (41, 43) to contact pads (16) (¶¶ 68, 69; Fig. 2), and
openings lined with interconnect metal (UBM 50) and containing solder (52)
for connecting a discrete device (53, 54) to contact pads (16) (¶ 136;
Fig. 10).
The Examiner finds that “Lin discloses that a second opening in
alignment with the spoke (Para 0068 and 0136; multiple openings in
polymer layer aligned with UBM. It is obvious to make second opening in
the polymer layer aligned with he spoke.)” (Final Act. 6). The Examiner
concludes that “it would have been obvious to one of an ordinary skilled in
the art at the time of invention to modify Hwang's invention by having a
second opening in alignment with the spoke in order provide connection in a
semi-conductor device” (id.).
The Examiner does not identify the structure in Lin which the
Examiner refers to as “the spoke,” let alone establish that Lin would have
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led one of ordinary skill in the art “to modify Hwang's invention by having a
second opening in alignment with the spoke in order provide connection in a
semi-conductor device” (Final Act. 6).
The record, therefore, indicates that the Examiner’s rejection under
35 U.S.C. § 103 is based upon impermissible hindsight in view of the
Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art”). Accordingly, that rejection should be
reversed.