Texas Instruments Incorporated

Patent Trials and Appeals Board

Mar 16, 2020

15287561 - (D) (P.T.A.B. Mar. 16, 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.
15/287,561 10/06/2016 Lee Han Meng@ Eugene Lee TI-74696.1 8492
23494 7590 03/16/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
KARIMY, TIMOR
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
03/16/2020 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):
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, SUEANN LIM WEI FEN
____________________

Appeal 2019-005606
Application 15/287,561
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
ADAM J. PYONIN, Administrative Patent Judges.

MacDONALD, 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 8–14. Final Act. 8. Claims 1–7 have
been withdrawn. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 Appellant identifies the real party in interest as Texas Instruments
Incorporated. Appeal Br. 3.
Appeal 2019-005606
Application 15/287,561

2
CLAIMED SUBJECT MATTER
Claims 8–11 are illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
8. A packaged electronic system comprising:
[A.] a vertical stack including
[i.] a second sub-leadframe aligned over and
insulated from a first sub-leadframe,
[ii.] the first sub-leadframe having a pad suitable
as substrate of the system,
[iii.] the second sub-leadframe having leads with
narrow and wide portions,
[iv.] the wide portions having first recesses
facing the pad and second recesses facing
away from the pad;
[B.] a semiconductor chip disposed between the first
recesses and the pad;
[C.] discrete components attached to the second
recesses, topping the second sub-leadframe; and
[D.] the vertical stack including the first sub-leadframe,
the chip, the second sub-leadframe, and the
components encapsulated in a packaging
compound, leaving the leads un-encapsulated, all
portions of the first sub-leadframe encapsulated
within the packaging compound belonging to a first
plane plus all portions of the second sub-leadframe
encapsulated within the packaging compound
belonging to a second plane.
9. The system of Claim 8 wherein the discrete components
include passive components such as capacitors, resistors,
and inductance.
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10. The system of Claim 8 wherein the insulation between the
first and second sub-leadframe derives from packaging
compound channeled between the first and second sub-
leadframes during the encapsulation process.
11. A packaged electronic system comprising:
[A.] a vertical stack including
[i.] a second sub-leadframe aligned over and
insulated from a first sub-leadframe,
[ii.] the first sub-leadframe having a pad suitable as
substrate of the system,
[a.] the pad further including through-holes
extending into elongated grooves across
a first surface,
[b.] the through-holes and the grooves
suitable for channeling a viscous
encapsulation compound, and
[iii.] the second sub-leadframe having leads with
narrow and wide portions,
[iv.] the wide portions having first recesses facing
the pad, and second recesses facing away from
the pad;
[B.] a semiconductor chip disposed between the first
recesses and the pad;
[C.] discrete components attached to the second recesses,
topping the second sub-leadframe; and
[D.] the vertical stack including the first sub-leadframe,
the chip, the second sub-leadframe, and the
components encapsulated in a packaging compound,
leaving the leads un-encapsulated.
Appeal 2019-005606
Application 15/287,561

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REFERENCE
The Examiner relies on the following reference:
Name Reference Date
Saye US 2013/0249051 Al Sept. 26, 2013

REJECTION
The Examiner rejects claims 8–13 under 35 U.S.C. 102(a)(2) as
anticipated by or, in the alternative, under 35 U.S.C. §103 as obvious over,
Saye.2 Final Act. 8–16.
As to claim 8, Appellant separately argues claim 8. We discuss below
that separate argument.
As to claim 9, to the extent Appellant discusses claim 9, Appellant
merely recites the particular language of claim 9 and asserts the cited prior
art reference does not disclose the claim limitations. Without more, this fails
to constitute an argument on the merits. See 37 C.F.R. § 41.37(c)(1)(iv); In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Thus, Appellant does not
present separate arguments for claim 9. Therefore, the rejections of this
claim turn on our decision as to claim 8. Except for our ultimate decision,
we do not discuss the claim 9 further herein.
As to claim 10, the Appeal Brief paragraph bridging pages 10–11
similarly recites the particular language of claim 10 and asserts the cited
prior art reference does not disclose the claim limitations. Again, without
more, this fails to constitute an argument on the merits. As to the argument
with respect to claim 10 in the first full paragraph of Appeal Brief page 11,
we discuss below that separate argument.

2 For convenience, we refer to this rejection as being under §§ 102/103.
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As to claims 11–13, we select claim 11 as the representative claim
for this rejection because Appellant’s contentions discussed herein as to
claim 11 are determinative as to the rejection of claims 11–13.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred.
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 8 under 35 U.S.C. §§ 102/103.
The Appellant respectfully traverses the assertion in the
Office Action (pages 2, 3, and 5) that [Saye’s] leadframes 101
and 110 are sub-leadframes. The Applicant submits that the
Specification defines the “two sub-leadframes” as belonging to a
single leadframe 100 (paragraphs 0022; FIGS. 1-2). In addition,
the Specification teaches that the “first sub-leadframe 110 is
connected to a second sub-leadframe by a couple of links 150 ...
suitable for easy bending” (paragraph 0023; FIG. 1) (See also
paragraph 0028 and FIG. 2.) Saye instead teaches that leadframes
101 and 110 are separate leadframes.
Appeal Br. 8.
In the Answer, the Examiner responds:
The appellant refers to Para [0022] of the specification to
argue that the claim “first sub-leadframe” and “second sub-lead
frame” are different from Saye’s first and second sub-
leadframes. The Examiner would like to point out that appellant
misinterprets the principle that claims are interpreted in the light
of the specification. Although these elements (first sub-
leadframe and second sub-leadframe) are found as examples or
embodiments in the specification, they were not claimed
explicitly. Nor were the words that are used in the claims defined
in the specification to require these limitations. A reading of the
specification provides no evidence to indicate that these
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limitations must be imported into the claims to give meaning to
disputed terms. Constant v. Advanced Micro-Devices Inc., 7
USPQ 2d 1064. The appellant further highlights details of
Saye’s leadframe structure, which seems irrelevant in view of the
broadness of claim features. The claim recites “a vertical stack
including a second sub-leadframe aligned over and insulated
from a first sub-leadframe”, which remains broad and Saye’s
associated features (sub-lead frames 101 & 110) read on said
limitations.
Ans. 7–8.
We are unpersuaded by Appellant’s argument. We agree with the
Examiner that the argued limitations are not found in the claim, and will not
be read from the Specification into the claim. That is, the argument is not
commensurate with the scope of the claim language. The steps of claim 8
are not explicitly so limited, nor does Appellant explain how claim 8 would
be inherently so limited, nor do we find alternative language that would
similarly mandate the argued limitation. In re Self, 671 F.2d 1344, 1348
(CCPA 1982)(“Many of appellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
A.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 8 under 35 U.S.C. §§ 102/103.
The Appellant also respectfully traverses the assertion in
the Office Action (page 5) that “Saye teaches in Para [0033]
wherein the leads 105 are left unencapsulated”. The Appellant
submits that Saye teaches that elements 105 are instead “lead
ends” (paragraph 0033) of “first leads 102” (paragraph 0034;
FIGS. 1-2). Therefore elements 105 of Saye are not leads.
Appeal Br. 9.
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In the Answer, the Examiner responds:
The appellant’s argument that un-encapsulated lead ends
105 (Saye’s Fig. 1) are not leads is not persuasive. The Examiner
maintains that lead ends 105 are part of the lead structure, and as
such they are leads. Because the packaging material 140 does
not cover lead portions/ends 105, therefore, leads 105 are
un-encapsulated for external electrical connections.
Ans. 8.
We are unpersuaded by Appellant’s argument. Essentially,
Appellant’s argument is that claim 8 requires that more than a lead end is
“un-encapsulated.” We disagree. As Appellant uses the term “lead” in the
disclosure, it may refer to the entire lead or a sub-portion thereof. The
Examiner’s reading of the “lead” limitation is consistent with the
embodiments of the Specification, paragraphs 34–35 (“the narrow portions
of the leads are left un-encapsulated” and “the un-encapsulated leads are
formed”) and Figures 6, 7A, and 7B, where the un-encapsulated lead
discussed is only an end of a larger overall lead.
B.
Appellant also raises the following arguments in contending that the
Examiner erred in rejecting claim 10 under 35 U.S.C. §§ 102/103.
The Appellant respectfully traverses the assertion in the
Office Action (page 3) that “Saye teaches ... packaging
compound channeled between the first and second sub-
leadframes during the encapsulation process (Fig. 1).” The
Applicant submits that Saye teaches the existence of “a package
140 made of polymeric material” (paragraph 0032), but Saye
does not teach any encapsulation process.
Appeal Br. 11 (emphasis added).
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We are unpersuaded by Appellant’s argument. Contrary to
Appellant’s argument, we determine that Saye does teach an encapsulation
process. Saye explains:
In the next process step, the 3-dimensional network is
encapsulated in a packaging compound. A preferred method is
a transfer molding technology using an epoxy-based molding
compound filled with inorganic filler particles.
Saye ¶ 40 (emphasis added).
C.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 11 under 35 U.S.C. §§ 102/103.
[T]he Appellant respectfully traverses the assertion in the Office
Action (page 4) that Saye teaches that the pads 113 have
“through-holes and the grooves suitable for channeling a viscous
encapsulation compound”. The Appellant submits that Saye
does not teach that the cited “second pads 113” has through-
holes or extended grooves (paragraph 0036; FIG 4), as defined
in the Specification and required by Claim 11. More specifically,
the Appellant submits that Saye never teaches “through-holes
and grooves suitable for channeling a viscous encapsulation
compound” (paragraph 0040), as required by Claim 11.
Appeal Br. 14 (emphasis added).
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
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supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
Particularly, we agree with Appellant that the language of claim 11
requires “through-holes and grooves suitable for channeling a viscous
encapsulation compound,” and we disagree with the Examiner’s reasoning
that Saye alone without more is sufficient to show the argued claim
limitation. Consistent with Appellant’s arguments, we conclude that there is
insufficient articulated reasoning to support the Examiner’s finding that Saye
discloses the argued claim limitation.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 11 is anticipated or
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention.
CONCLUSION
The Examiner has not erred in rejecting claims 8–10 as unpatentable
under 35 U.S.C. §§ 102/103.
Appellant has established that the Examiner erred in rejecting claims
11–13 as unpatentable under 35 U.S.C. §§ 102/103.
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The Examiner’s rejection of claims 8–10 as unpatentable under
35 U.S.C. §§ 102/103 is affirmed.
The Examiner’s rejection of claims 11–13 as unpatentable under
35 U.S.C. §§ 102/103 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
8–13 102/103 Saye 8–10 11–13
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 IN PART