SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Aug 20, 2021

2020005827 (P.T.A.B. Aug. 20, 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.
15/945,649 04/04/2018 Atapol PRAJUCKAMOL ONS01685D01US 1043
132240 7590 08/20/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (RH)
5005 E. MCDOWELL ROAD, Maildrop A700
Phoenix, AZ 85008
EXAMINER
TRAN, BINH BACH THANH
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
08/20/2021 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):
patents@onsemi.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ATAPOL PRAJUCKAMOL,
CHEE HIONG CHEW, and YUSHUANG YAO

Appeal 2020-005827
Application 15/945,649
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
BRIAN D. RANGE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–17 and 21–32, which constitute all
the claims on appeal. The Examiner indicates claims 18-20 as allowable
(Final Act. 13). Claims 1–12 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Semiconductor Components Industries,
LLC doing business as ON Semiconductor. Appeal Br. 1.
Appeal 2020-005827
Application 15/945,649

2
We REVERSE.
Appellant’s invention is directed to methods for forming a
semiconductor package that facilitates an improved attachment mechanism
between the package and a carrier (Spec. 1:35–36, 2:1–3; Claims 13 & 21).
Claim 13 is representative of the subject matter on appeal:
13. A method of forming a semiconductor package
comprising:
forming a first side of the package substantially parallel to
a second side of the package;
forming a first attachment clip extending between the first
and second sides and positioned near a first end of the first and
second sides wherein the first attachment clip is attached to the
first and second sides, the first attachment clip having a first
opening through the first attachment clip;
forming a second attachment clip extending between the
first and second sides and positioned near an opposite end of the
first and second sides wherein the second attachment clip is
attached to the first and second sides, the second attachment clip
having a second opening through the second attachment clip; and
forming a first loop in the first attachment clip and forming
a second loop in the second attachment clip wherein the first loop
is a portion of the first attachment clip that extends in a first
direction upward away from a plane of a central region of the
first attachment clip and the portion continues to extend in a
second direction back downward to substantially the plane of the
central region of the first attachment clip wherein the first loop
is positioned between the first opening and the first side and all
of the first loop is external to both the first side and the second
side, and the second loop is a portion of the second attachment
clip that extends upward away from a plane of a central region
of the second attachment clip and continues to extend back
downward to substantially the plane of the central region of the
second attachment clip wherein the second loop is positioned
between the second opening and the first side and all of the
Appeal 2020-005827
Application 15/945,649

3
second loop is external to both the first side and the second side.
(emphasis added reflects argued limitation).
Appellant appeals the following rejections:
1. Claims 13–17 are rejected under 35 U.S.C. § 103 as unpatentable
over Hong (US 2014/0285972 A1, Sept. 25, 2014) in view of Lee
(US 6,362,962 B1, Mar. 26, 2002) and Huang (US
2007/0025086, Feb. 1, 2007).
2. Claims 21–32 are rejected under 35 U.S.C. § 103 as unpatentable
over Hong in view of Lee.

FINDINGS OF FACT & ANALYSIS
Claim 13
The Examiner’s findings and conclusions regarding Hong, Lee, and
Huang are located on pages 4 to 6 of the Final Action. The Examiner finds
that Hong teaches the subject matter of claim 13, except that Hong does not
teach the first and second loop return to substantially the plane of the central
region of the first and second attachment clip and the first loop and second
loop are external to both the first side and second side (Final Act. 4–5). The
Examiner finds Hong suggests that the elastic portion 44 extends upward
and away from the central region 42 such that the structure is capable of
returning to a point that is substantially near the plane of the central region
42 (Final Act. 6). The Examiner further finds Lee teaches in Figure 1 the
fastener 40 extends upward and returns to the plane of the central region
(Final Act. 6). The Examiner finds that Huang teaches a first loop P1 and a
second loop P2 that are external to both first side and the second side of the
semiconductor case (i.e., the loops are in the center of the clip) (Final Act.
Appeal 2020-005827
Application 15/945,649

4
6). The Examiner concludes it would have been obvious to modify the
shape of the flexible clip or apply force on the flexible clip or to adjust the
insertion point of the clip into the side of the housing to make the flexible
clip bend into a desirable form in order to provide enough spring force to
hold the components together (Final Act. 6). The Examiner further
concludes it would have been obvious to rearrange the location of the loops
as needed in order to adjust the flexibility of the clip to provide a proper
pressure for attaching the heat sink or other components to the board or
housing (Final Act. 6).
Appellant argues Hong, Lee, and Huang fail to teach or suggest a clip
that includes a portion that extends in a first direction and the portion
continues to extend in a second direction back downward to substantially the
plane of the central region (Appeal Br. 14, 16, and 19). Appellant argues
that Hong and Lee do not describe in the written description a clip having
the first and second loop as in claim 13 (Appeal Br. 14, 16). Appellant
argues the failure to provide such a description undermines the Examiner’s
sole reliance on Hong’s and Lee’s figures to teach such limitations (Appeal
Br. 14, 16). Appellant argues the Examiner’s rejection is based on hindsight
and fails to provide a rationale as to why a person of ordinary skill would
have modified Hong, Lee, and Huang to arrive at the method that uses the
loops recited in claim 13 (Appeal Br. 17).
The preponderance of the evidence favors Appellant’s argument of
non-obviousness. The Examiner’s finding that Hong suggests a clip that is
elastic and capable of returning to a point that is substantially near the plane
of the central region fails to address Hong’s teaching to place the clip in
fixing grooves 36 that restrain the movement of the clip (¶ 65). Moreover,
Appeal 2020-005827
Application 15/945,649

5
Hong’s Figures 3 and 6 appear to show that 45 is located at a higher plane
than coupling portion 42 such that the elastic portion 44 does not descend to
substantially the plane of the central region (i.e., coupling region 42) absent
some external force.
The Examiner relies on Lee’s Figure 1 as showing the fastener 40
extends upward and returns to the plane of the central region (Final Act. 6).
The Examiner explains that Lee teaches a flexible clip bending upward and
then downward reaching the plane of the central region in Figure 1 (Ans. 3).
However, Lee’s Figure 1 appears to show that body 41 is a central region
and the spring portions 43 extend from the body 41 to a central horizontal
portion 45 which appears to be lower than the body 41 (Lee Fig. 1). As
noted by Appellant, Lee’s description of Figure 1 does not include a rising
and descending loop portion (34) that ends at substantially coplanar central
(30) and end portions (33, 36) as shown in Appellant’s Figure 5 (Appeal Br.
16). The Examiner has not explained whether Lee’s leg 49 that reaches an
apex with the downwardly directed spring portion 43 is construed as a
portion coplanar with central region 41. Moreover, the Examiner concedes
that Lee’s leg that is part of the “loop” is not external to the side of the
housing as required by claim 13 (Ans. 5).
The Examiner contends that the location of the loop can be rearranged
to be external of the housing as taught by Huang (Ans. 5). The Examiner
does not explain sufficiently how Hong’s clip as modified by Lee would
have been further modified in light of Huang (Final Act. 6). The Examiner’s
rationale for using Huang’s placement of the loops away from the side
portions of the casing is based upon providing proper pressure for attaching
a heat sink to the circuit board (Final Act. 6). Hong’s and Lee’s disclosures
Appeal 2020-005827
Application 15/945,649

6
both teach that their clip arrangement provides forces to maintain a good
connection between the fastened parts (Hong ¶ 91; Lee 1:5–8, 42–45). In
other words, the Examiner’s rejection lacks rational underpinnings as to why
a person of ordinary skill in the art would have modified Hong’s clip in light
of Lee’s and Huang’s teachings to arrive at a clip that performs the same
function (i.e., providing sufficient force to hold the electrical components
together). We agree with Appellant that the Examiner engaged in
impermissible hindsight in combining the teachings of Hong, Lee and
Huang.
We reverse the Examiner’s § 103 rejection of claims 13–17 over
Hong in view of Lee and Huang.

Claim 21
The Examiner’s findings and conclusions regarding Hong and Lee
with regard to claim 21 are located on pages 8 to 9 of the Final Action. The
Examiner finds Hong teaches the subject matter of claim 21, except that
Hong does not teach the attachment clip is completely encased within the
respective first projection and second projection (Final Act. 9). The
Examiner finds that Lee teaches all of the first end and all of the second end
of the attachment clip are completely encased within the respective first
projection and second projection as shown in Figure 4 where the legs are
completely encased within the projection of the housing (Final Act. 9). The
Examiner concludes it would have been obvious to customize the openings
on the housing in order to provide a secure holding arrangement of the
attachment clip to provide pressure to hold the heat sink or other
components to the board or to the housing (Final Act. 9).
Appeal 2020-005827
Application 15/945,649

7
Appellant argues that the Examiner has not addressed the claim
language as worded, but rather rephrases the claim as requiring “the clip is
integrally attached to the housing.” (Appeal Br. 25). Appellant argues that
claim 21 requires
the first end and the second end of the attachment clip integrally
embedded with all of the first end and all of the second end
completely encased within the respective first projection and
second projection during the step of forming the respective first
projection and second projection integrally attached to the
housing.
(Appeal Br. 25). Appellant argues that the Examiner improperly imports the
Figure 10 embodiment into claim 21 where screw 91 attaches package 10 to
carrier 90 (Appeal Br. 26). Appellant contends that page 9, line 34 to page
10 line 4 describes how the projections 20 and 21 may be molded around the
ends 33 and 36 of the clip 30 (Appeal Br. 26). Appellant argues that Hong
and Lee fail to teach all of the first end and all of the second end completely
encased within the respective first projection and second projection (Appeal
Br. 30, 31). We agree.
The Examiner finds Hong does not teach the ends of the attachment
clip are completely encased within the respective first and second
projections (Final Act. 9). The Examiner relies on Lee’s Figure 4 to teach
this limitation (Final Act. 9). However, Lee’s Figure 4 does not show ends
of the clip (i.e., leg 49) completely encased in the first and second
projections. We construe “forming the first end and the second end of the
attachment clip integrally embedded with all of the first end and all of the
second end completely encased within the respective first projection and
second projection during the step of forming the respective first projection
and second projection integrally attached to the housing,” as requiring the
Appeal 2020-005827
Application 15/945,649

8
first and second ends of the clip to be molded into the first and second
projections of the housing so that the first and second ends are embedded in
the first and second projections. Our construction is supported by the
Specification disclosure at page 9, lines 34–35 and page 10, lines 1–4.
In light of this claim construction, the Examiner has not shown where
Hong and Lee teach a clip where the first end and second end are molded
into the first and second projections of the housing so that the first and
second ends are embedded in the first and second projections. We reverse
the Examiner’s § 103 rejection of claims 21–32 over Hong and Lee.

DECISION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–17 103 Hong, Lee, Huang 13–17
21–32 103 Hong, Lee 21–32
Overall Outcome 13–17,
21–32

REVERSED