SHINKO ELECTRIC INDUSTRIES CO., LTD.

Patent Trials and Appeals Board

Sep 28, 2020

14663921 - (D) (P.T.A.B. Sep. 28, 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.
14/663,921 03/20/2015 Noriyoshi Shimizu HKY-39330 2305
40854 7590 09/28/2020
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
MILAKOVICH, NATHAN J
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NORIYOSHI SHIMIZU, WATARU KANEDA, and
AKIO ROKUGAWA
____________

Appeal 2019-003207
Application 14/663,921
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, 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 1, 3, 6–14, and 19–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Shinko Electric Industries Co., Ltd. as the real
party in interest. Appeal Br. 3.
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Application 14/663,921

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BACKGROUND
The invention relates to a wiring board, such as for a semiconductor
package. Spec. ¶¶ 1, 2. Claim 1 reads:
1. A wiring board comprising:
a core layer;
a first wiring layer formed on one surface of the core layer;
a first insulating layer formed on the one surface of the
core layer so as to cover the first wiring layer;
a via wiring embedded in the first insulating layer, the via
wiring being a metal layer filled in a via hole formed in the first
insulating layer;
a second wiring layer formed on a first surface of the first
insulating layer, the first surface being an opposite surface of a
surface in contact with the core layer, the second wiring layer
having a structure where an electrolytic plating layer is formed
on a seed layer; and
a second insulating layer formed on the first surface of the
first insulating layer so as to cover the second wiring layer, the
second insulating layer being thinner than the first insulating
layer,
wherein the first wiring layer comprises a pad and a plane
layer provided around the pad,
one end surface of the via wiring is exposed from the first
surface of the first insulating layer and flush with the first surface
of the first insulating layer,
an entirety of the one end surface of the via wiring is
directly bonded to the seed layer constituting the second wiring
layer,
another end surface of the via wiring is directly bonded to
the pad in the first insulating layer, and
the first surface of the first insulating layer and the one end
surface of the via wiring are polished surfaces, and a roughness
of the first surface of the first insulating layer is less than a
roughness of an inner wall surface of the via hole formed in the
first insulating layer.
Appeal Br. 22 (Claims Appendix) (emphasis provided to showcase a key
recitation in dispute).
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Application 14/663,921

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Independent claim 19 similarly recites a wiring board which includes,
inter alia, a second insulating layer that is thinner than a first insulating
layer. Each remaining claim on appeal depends from claim 1 or 19.

REJECTIONS
I. Claim 23 stands rejected under 35 U.S.C. § 112(d) for failing to limit
the subject matter of the claim from which it depends.
II. Claims 1, 3, 6, 14, and 25–28 stand rejected under 35 U.S.C. § 103 as
unpatentable over Shin,2 Peters,3 Maeda,4 and Funaya.5
III. Claims 7–11 stand rejected under 35 U.S.C. § 35 U.S.C. § 103 as
unpatentable over Shin, Peters, Maeda, Funaya, and Mori.6
IV. Claims 12 and 13 stand rejected under 35 U.S.C. § 35 U.S.C. § 103 as
unpatentable over Shin, Peters, Maeda, Funaya, Mori, and Shim.7
V. Claims 19–24 stand rejected under 35 U.S.C. § 35 U.S.C. § 103 as
unpatentable over Shin, Peters, Maeda, Mori, and Shim.

OPINION
Rejection I: failure to satisfy 35 U.S.C. § 112(d)
The Examiner finds claim 23 fails to recite any feature not already
present in its parent claim 19, and rejects claim 23 under 35 U.S.C. § 112(d)
on that basis. Final Act. 8. Appellant presents no argument against the

2 US 2014/0182889 A1, published July 3, 2014 (“Shin”).
3 US 6,521,530 B2, issued February 18, 2003 (“Peters”).
4 US 2014/0290997 A1, published October 2, 2014 (“Maeda”).
5 US 2011/0155433 A1, published June 30, 2011 (“Funaya”).
6 US 2012/0068359 A1, published March 22, 2012 (“Mori”).
7 US 2010/0224974 A1, published September 9, 2010 (“Shim”).
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Application 14/663,921

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Examiner’s rejection. Accordingly, Appellant does not identify reversible
error. Rejection I is sustained.

Rejections II–V: obviousness
Each independent claim on appeal recites a wiring board which
includes, inter alia, a second insulating layer formed on a surface of a first
insulating layer, so as to cover a wiring layer, “the second insulating layer
being thinner than the first insulating layer.” The Examiner finds Shin’s
Figure 1 depicts a wiring board having first insulating layer 120, wiring
layer 130, and second insulating layer 140 formed on first insulating layer
120 and covering wiring layer 130. Final Act. 10–11. We reproduce Shin’s
Figure 1 below.

Figure 1 is a cross-sectional schematic representation of a multilayered
substrate. Shin ¶ 42.
The Examiner acknowledges Shin does not disclose relative
thicknesses of the first and second insulating layers, and finds Maeda would
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Application 14/663,921

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have provide one of ordinary skill with a reason to form Shin’s insulating
layer 140 thinner than insulating layer 120. Final Act. 13. Particularly, the
Examiner finds Maeda teaches that forming a relatively thin upper insulating
layer provides “reduced thermal coefficient of lower insulating layers so as
to manufacture a multilayer wiring board with little warpage and excellent
connection reliability.” Id. (citing Maeda ¶¶ 37, 53).
Appellant contends modifying Shin to include a relatively thin upper
insulating layer would have been contrary to Shin’s teaching that second
insulating layer 140 is configured to prevent warpage, and that Shin and
Maeda, when read in their entireties, would not have lead one of ordinary
skill in the art to modify Shin in the manner proposed by the Examiner.
Appeal Br. 15.
Shin is silent regarding thickness of insulating layers 120, 140.
However, Shin teaches insulating layer 140 “may be made of a material
capable of decreasing warpage of the multilayered substrate 100.” Shin
¶ 53. To that end, Shin teaches insulating layer 140 may exhibit a lesser
thermal expansion rate relative to that of insulating layer 120. Id. That is,
Shin states warpage is decreased when the upper (second) insulating layer is
configured to have a lesser rate of thermal expansion. Id.
Maeda, on the other hand, states “the lower insulating layer 51 has a
smaller thermal expansion coefficient than the thermal expansion coefficient
of the upper insulating layer 52. Maeda ¶ 37 (emphasis added). Maeda
further states, “[t]he lower insulating layer 51 with the small thermal
expansion coefficient is formed thicker than the upper insulating layer 52, so
as to lower the thermal expansion coefficient as the overall insulating layer.”
Id.
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Application 14/663,921

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Reading the collective teachings of Shin and Maeda, as summarized
above, Shin discloses upper insulating layer 140 is configured to exhibit the
lesser thermal expansion rate, and Maeda offers a reason to provide a greater
relative thickness for the insulating layer configured to exhibit the lesser rate
of thermal expansion. The Examiner’s opposite determination, that one
skilled in the art would have had reason to provide Shin with a relatively
thicker lower insulating layer 120, is not supported by a preponderance of
the evidence presented.
For the foregoing reasons, we are persuaded the Examiner does not
identify evidence sufficient to support the obviousness determination.
Accordingly, Rejections II–V are not sustained.
CONCLUSION
The Examiner’s decision rejecting claim 23 under 35 U.S.C. § 112(d)
is affirmed.
The Examiner’s decision rejecting claims 1, 3, 6–14, and 19–28 under
35 U.S.C. § 103 is reversed.

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Application 14/663,921

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23 112(d) 23
1, 3, 6, 14,
25–28
103 Shin, Peters,
Maeda, Funaya
1, 3, 6, 14,
25–28
7–11 103 Shin, Peters,
Maeda, Funaya,
Mori
7–11
12, 13 103 Shin, Peters,
Maeda, Funaya,
Mori, Shim
12, 13
19–24 103 Shin, Peters,
Maeda, Mori,
Shim
19–24
Overall
outcome
23 1, 3, 6–14,
19–22, 24–
28

AFFIRMED-IN-PART