Ex Parte Akram et al

Patent Trial and Appeal Board

Sep 28, 2012

11384069 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SALMAN AKRAM and KYLE K. KIRBY1
____________

Appeal 2010-006129
Application 11/384,069
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER,
and JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claim 2, 4, and 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Micron Technology Inc. is the real party in interest.
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Invention
Appellants’ invention relates to a through-wafer interconnect, e.g., a
via,2 comprising a conductive via member passing through a wafer between
a first surface and a second, opposing surface. A portion of the conductive
via member is located between the first and second surfaces and has a
substantially constant lateral extent. Further, the wafer is thinned from an
initial thickness to expose the first end of the conductive via member. The
first end of the conductive via member may have either a trapezoidal shape,
e.g., a frusto-pyramidal shape, or a frusto-conical shape, which tapers inward
as the first end extends away from the first surface of the wafer. The
thinning of the wafer also may expose only an end surface of the second end
of the conductive via member. The second end may have a shape tapering
from a smaller lateral extent to a larger lateral extent as the second end
approaches the second surface or a post shape having a substantially
constant lateral extent. See generally Spec. ¶ [0084]; Figs. 10A, 11A, 19.
In another embodiment, the invention relates to a via-containing
member comprising a substrate3 and a pattern of vias. The substrate has a
first surface and a second, opposing surface. Each of the vias within the
pattern of vias passes through the substrate and has a first end; a second,

2 Appellants define the term “via” as describing “a hole or aperture having
conductive material or a conductive member therein which extends through
a substrate.” Spec. ¶ [0004]. Further, Appellants indicate that a via for
connecting circuitry on one side of a wafer to circuitry on the other side of
the wafer or to external circuitry is known as a “through wafer interconnect”
or “TWI.” Spec. ¶ [0003].
3 Appellants provide examples of a “substrate” which include
“semiconductor wafers, semiconductor wafer portions, other bulk
semiconductor substrates, semiconductor devices, interposers, probe test
cards, and the like.” Spec. ¶ [0056].
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opposing end; and a portion therebetween having a substantially constant
cross-sectional area. The first end may extend outward from either the first
or second surface and may have either a trapezoidal shape or a frusto-conical
shape. See generally Spec. ¶¶ [0079]-[0081]; Figs. 14A-16B.
Independent claims 2 and 4 are reproduced below with the disputed
limitations emphasized:
2. A through-wafer interconnect comprising a conductive via member
passing through a wafer between a first surface and a second,
opposing surface and comprising a portion between a first end and
a second end having a substantially constant lateral extent, the
wafer being thinned from an initial thickness to expose the first
end of the via member as one of a trapezoid shape and a frusto-
conical shape, tapering inwardly as it extends away from the first
surface, and the second surface of the wafer exposing only an end
surface of the second end of the via member comprising one of a
shape tapering from a smaller lateral extent to a larger lateral
extent as it approaches the second surface and a post shape having
a substantially constant lateral extent.

4. A via-containing member, comprising:
a substrate having a first surface and a second, opposing surface;
a pattern of vias in the substrate, each via passing through the
substrate and having a first end, a second, opposing end and a
portion therebetween of substantially constant lateral extent,
wherein the first end comprises one of a trapezoidal shape and a
frustoconical shape and extends outwardly from one of the first
surface and the second, opposing surface.

Independent claim 4 is representative of claim 5.
The Examiner relies on the following as evidence of unpatentability:
Halahan US 6,844,241 B2 Jan. 18, 2005

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The Rejection
The Examiner rejected claims 2, 4, and 5 under 35 U.S.C. § 103(a) as
rendered obvious by Halahan.4 (Ans. 3.)5

THE OBVIOUSNESS REJECTIONS OVER HALAHAN
Regarding independent claim 2, the Examiner finds that Halahan
discloses all of the limitations of the claim (Ans. 3-4), except that “Halahan
is silent upon the structure comprising a portion between a first end and a
second end having a substantially constant lateral extent and a post shape
having a substantially constant lateral extent.” (Ans. 4 (emphasis in
original).) Nevertheless, the Examiner finds that Halahan describes the
shapes of the first and second ends and that the significance of the shapes of
Halahan’s first and second ends are to provide both a small contact surface
on one end and a large contact surface on the other end of the through-wafer
interconnect. (Ans. 4; see also col. 3, ll. 15-30; Fig. 4A.) Thus, the
Examiner concludes that the portion between the ends merely provides an
electrical connection between the shaped ends. (Ans. 4.)
Despite Halahan’s silence regarding whether a portion between a first
end and a second end has a substantially constant lateral extent, the
Examiner contends that it would have been obvious to a person of ordinary
skill in the relevant art to modify the shape of the portion between Halahan’s
ends, such that the portion has a substantially constant lateral extent. (Ans.

4 Claims 1-34 are pending in this application, but claims 1, 3, and 6-34 are
withdrawn from consideration as directed to unelected species. (App. Br. 2.)
5 Throughout this Decision, we refer to (1) Appeal Brief, filed Aug. 18,
2009; (2) the Examiner’s Answer, mailed Dec. 28, 2009; and (3) Reply
Brief, filed Mar. 1, 2010.
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4-5.) In support of this contention, the Examiner finds that “the shape of the
portion does not change or modify the function or propertied [sic] from what
is ordinarily expected.” (Ans. 5 (emphasis in original).) Further, relying
upon the court’s decision in In re Dailey, 357 F.2d 669 (CCPA 1966), the
Examiner contends that Appellants have not demonstrated that the shape of
the portion between the first and second ends is significant or anything more
than one of numerous configurations. (Ans. 5 (quoting Dailey, 357 F.2d at
672-73); see also MPEP § 2144.04(IV)(B).)
With regard to claims 4 and 5, the Examiner finds that Halahan also
discloses all of the limitations of these claims, except for a portion of each
via between a first end and a second end having a substantially constant
lateral extent. (Ans. 5-6.) Nevertheless, the Examiner finds that, for the
same reasons stated above with respect to claim 2, it would have been
obvious to a person of ordinary skill in the relevant art to modify Halahan to
achieve Appellants’ invention, as described in claims 4 and 5. (Ans. 6.)
With respect to independent claims 2 and 4, Appellants argue that the
Examiner fails to provide a sufficient reason why one of ordinary skill in the
relevant art would modify Halahan to include a portion between a first end
and a second end having a substantially constant lateral extent. (App. Br. 7-
8; Reply Br. 6.) Moreover, Appellants argue that the Examiner’s reliance on
Dailey is misplaced because the substantially constant lateral extent of the
portion between the first and second ends in Appellants’ invention is
“significant.” (App. Br. 8.) Thus, in the absence of a sufficient reason to
modify Halahan, Appellants argue that the Examiner fails to establish a
prima facie case of obviousness. (Id.)

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ISSUE
Is the Examiner’s reason to modify the teachings of Halahan to
include a portion between a first end and a second end having a substantially
constant lateral extent supported by some rational underpinning justifying
the Examiner’s obviousness conclusions for claims 2 and 4?

ANALYSIS
1. Claim 2.
We begin by construing the disputed limitation of claim 2, which
describes a portion between a first end and a second end having a
“substantially constant lateral extent.” In construing the claims, we are
guided by Appellants’ Specification. See Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en banc) (noting that the Specification is the
single best guide to a disputed term’s meaning and acts as a dictionary when
it expressly defines terms recited in the claims). Appellants do not expressly
define the phase: “substantially constant lateral extent” in the Specification.
We note, however, that Appellants state that “[a]s electronic components are
becoming increasingly dense, it is necessary to decrease the lateral size or
diameter as well as spacing or pitch of TWIs for increased TWI density.”
(Spec. ¶ [0007] (emphases added).) Thus, we construe the disputed
limitation to describe a portion extending between a first and a second end of
a conductive via member that has a substantially constant or unchanging,
lateral size or diameter, e.g., a substantially cylindrical shape.
a. Rational Underpinning for the Examiner’s Reasoning.
As noted above, the Examiner finds that Halahan describes the shapes
of first and second ends and that the significance of the shapes of Halahan’s
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first and second ends are to provide both a small contact surface on one end
and a large contact surface on the other end of the through-wafer
interconnect. (Ans. 9; see also col. 3, ll. 15-30; Fig. 4A.) Moreover, the
Examiner concludes that the portion between the ends merely provides an
electrical connection between the shaped ends. (Ans. 10.) Appellants do not
contest this conclusion. (See App. Br. 5-11.) Thus, we find that the shape of
the portion between Halahan’s first and second ends has not been shown to
change or modify the function or properties of Halahan’s through-wafer
interconnect. (Id.)
In Dailey, the court affirmed the decision of the Patent Office Board
of Appeals, agreeing with the Examiner’s conclusion that the claimed “less
than hemisphere” configuration of a disposable nursing container was
merely a matter of choice. Dailey, 357 F.2d at 672. The court stated that:
Appellants have presented no argument which convinces us that
the particular configuration of their container is significant or is
anything more than one of numerous configurations a person of
ordinary skill in the art would find obvious for the purpose of
providing mating surfaces in the collapsed container of Matzen.
Id. at 672-73 (emphasis added). As noted above, the Examiner relies on the
rationale of Dailey to support the reasoning that a person of ordinary skill in
the relevant art would modify shape of the portion of Halahan’s through-
wafer interconnect to have a substantially constant lateral extent. (Ans. 4-5.)
Appellants argue, however, that the shape of the portion between the
first and second ends of Appellants’ through-wafer interconnect is
significant to its function or properties and that the Examiner fails to
demonstrate that a person of ordinary skill in the relevant art would have a
reason to modify Halahan to include a portion of such shape. (App. Br. 8-9;
Reply Br. 7.) In support of this argument, Appellants assert that, in the
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Specification, they specify advantages of the portion’s shape, as described in
Appellants’ claim 2. (Id.) In particular, Appellants assert that:
[a]t least some of the advantages of the present invention over
the prior art at the time of invention include those set forth in
the as-filed specification, including: the formation of very small
diameter vias in a dense pattern in a semiconductor substrate;
rapid and precise via formation, enhanced shape of via ends of
the via holes or apertures to enable direct attachment to small;
finely pitched bond pads; reduction in the danger of ball
cracking, solder shorts, etc. if the via ends are employed with
solder balls/bumps; and the invention removes the need for
further passivation of the substrate area surrounding the vias.
(App. Br. 8-9 (citing Spec. ¶¶ [0062], [0065]).)
We agree with the Examiner that at least “enhanced shape of via ends
of the via holes or apertures to enable direct attachment to small; finely
pitched bond pads; [and] reduction in the danger of ball cracking, solder
shorts, etc. if the via ends are employed with solder balls/bumps” relate to
the first and second ends. (Ans. 11.) We find that these advantages are not
related to the shape of the portion between the first and second ends.
With respect to the advantage in “the formation of very small
diameter vias in a dense pattern in a semiconductor substrate,” Appellants
argue that: “paragraph [0062] describes ‘the method of the invention’
provides substantial benefits. These benefits include ‘small diameter vias’
being formed in a dense pattern in a semiconductor substrate. Paragraph
[0065] describes ‘methods of the invention’ are used to enable ‘small via
diameter and pitch, i.e., spacing.’” (Reply Br. 8 (emphases added).) The
Examiner contends, however, that these advantages relate to the “use of the
methods” and not to the shape of the portion. (Ans. 11.)
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Similarly, the advantage that “the invention removes the need for
further passivation of the substrate area surrounding the vias” (Ans. 9)
relates to the precise placement of solder balls/bumps on the first or second
ends and, consequently, to the use of the claimed through-wafer interconnect
in a dense pattern, not to a single, through-wafer interconnect. (Spec. ¶¶
[0010] (describing known methods for creating “protecting layer”), [0081]
(describing use of limited passivation layer 92 with solder ball/bump 56,
without passivation layer 128); Fig. 14A (depicting passivation layers 92 and
128); see also App. Br. 3 (describing Fig. 14A as relating to the invention of
claim 4).) We agree with the Examiner and find that these advantages are
associated with the use of the claimed
through-wafer interconnect in a dense pattern, not to a single, through-wafer
interconnect. (Ans. 11.) Thus, because we construe claim 2 to describe one
or more through-wafer interconnects,6 we find that the advantages described
by Appellants fail to demonstrate that a portion of substantially constant
extent is significant or anything more than one of numerous configurations
in the through-wafer interconnect, as described in claim 2.
Finally, Appellants also indicate that “rapid and precise via
formation” is an advantage of their invention, as described in claim 2. (App.
Br. 9.) Appellants do not demonstrate, however, how this advantage relates
to the formation of a portion with a substantially constant lateral extent in a
through-wafer interconnect. (Cf. App. Br. 9-10 (describing additional
shaping processes required to form Appellants’ portion).) Therefore, we
find that Appellants also fail to demonstrate by this alleged advantage that a

6 KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)
(In patent claims, the indefinite article “a” or “an” means “one or more.”).
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portion of substantially constant lateral extent is significant in the through-
wafer interconnect, as described in claim 2.
b. Appellants’ Unsupported Arguments.
In addition, Appellants argue that
there is a constant drive in the semiconductor industry to reduce
the number of process steps required to manufacture various
types of semiconductor devices since, generally, the fewer
process steps involved in manufacturing a semiconductor
device, the lower the cost of manufacturing and the shorter the
time required to manufacture the device.
(App. Br. 9-10 (citations omitted).) Appellants then argue that a person of
ordinary skill in the relevant art would not be motivated to modify Halahan’s
wedge-shaped interconnect to achieve Appellants’ portion of substantially
constant lateral extent because of the additional processing steps required.
(App. Br. 10; Reply Br. 11-12.) Nevertheless, Appellants fail to provide
evidence regarding the number of additional process steps required or the
additional time and cost required to manufacture a through-wafer
interconnect having a portion with a substantially constant lateral extent,
instead of Halahan’s wedge-shaped portion. Compare Halahan, Fig. 4A
(depicting a wedge-shaped portion) with Appellants’ Fig. 19 (depicting a
portion having with a substantially constant lateral extent). As the Examiner
correctly notes, it is well settled that arguments of counsel cannot take the
place of factually supported evidence. (Ans. 10; see, e.g., In re Huang, 100
F.3d 135, 139-40 (Fed. Cir. 1996); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).) Thus, we find Appellants’ unsupported arguments
unpersuasive.
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c. Other and Untimely Arguments.
The Examiner additionally contends that claim 2 may be interpreted
to be a product-by-process claim and may be rejected because, regardless of
how the claimed invention is made, the patentability of the product is
determined by its structure. (Ans. 11-12.) We believe that the Examiner
may have misinterpreted Appellants’ arguments in the Appeal Brief as
attempting to raise this claim interpretation issue and will not address this
contention further. (App. Br. 9-10; see also Reply Br. 12 (“The Appellants
are not arguing that claim 2 is a product-by-process claim.”).)
Nor will we consider Appellants’ argument that the structure
described in claim 2 “will inherently have a smaller overall diameter for the
wider end than would a via with only a gradually tapered inner portion
between the two ends.” (Reply Br. 9 (emphasis added).) This argument is
presented for the first time in the Reply Brief and, therefore, is waived as
untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”). Nevertheless, even if we were to
consider this belated argument, it is unpersuasive because it is based on
unduly narrow assumptions about the scope of Appellants’ claimed
invention recited in claim 2.7

7 During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
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Because we find that Appellants fail to demonstrate that a portion
with a substantially constant lateral extent is significant or anything more
than one of numerous configurations in a single, through-wafer interconnect,
as described in claim 2, we find that, in relying upon Dailey, the Examiner
has articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion with respect to claim 2. Thus,
Appellants have not persuaded us of error in the Examiner’s rejection of
independent claim 2.
2. Claims 4 and 5.
As noted above, the scope of claims 4 and 5 differs from that of claim
2. While claim 2 is directed to a through-wafer interconnect, claims 4 and 5
are directed to a via-containing member comprising a substrate and a pattern
of vias. Despite this difference, the Examiner contends that the response to
Appellants’ arguments with respect to claim 2 is equally applicable to claims
4 and 5. (Ans. 12.) We agree.
As with the rejection of claim 2, the question before us with respect to
claims 4 and 5 is whether the shape of the claimed “portion” is significant or
is anything more than one of numerous configurations, such that the
Examiner’s reliance on Dailey to suggest a modified shape is misplaced.
As noted above, at least some of the advantages cited by Appellants
demonstrate that a portion having a substantially constant lateral extent in
each via of a “dense” pattern of “very small diameter vias” in a
via-containing member has significance. (Reply Br. 8 (citing Spec. ¶¶
[0062], [0065]) (emphases added); see also Spec. ¶ [0094].) Nevertheless,
Appellants do not recite the pattern of vias in claims 4 or 5 as “dense” or the
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vias in claims 4 or 5 as “very small diameter vias.”8 That is, Appellants’
argued advantages simply are not found in or commensurate with the scope
of claim 4 or 5. Thus, referring to the standard articulated in Dailey, we find
that Appellants have not demonstrated sufficiently that the shape of the
claimed portions in claims 4 and 5, which describe a pattern of vias, is
significant or is something more than one of numerous possible
configurations to rebut the Examiner’s prima facie case of obviousness.
Dailey, 357 F.2d at 672.
Given Appellants’ arguments, we find that the Examiner provides
sufficient rational underpinnings to extend the same reasoning for modifying
the teachings of Halahan, which is applied to the
through-wafer interconnect of Appellants’ claim 2, to the via-containing
member comprising a “pattern of vias” of Appellants’ claims 4 and 5.
Further, we note that Appellants do not raise arguments distinguishing claim
5 over Halahan, apart from those raised with respect to claim 4. (App. Br.
14.) Thus, we find that, in relying on Dailey, the Examiner articulates
sufficient reasoning to justify the obviousness rejection with respect to
claims 4 and 5. Therefore, the rejection of claims 4 and 5 is sustained.

CONCLUSION
We sustain the obviousness rejection of claims 2, 4, and 5 under 35
U.S.C. § 103.

8 Although the claims are interpreted in light of the Specification, limitations
from the Specification are not read into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
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DECISION
The Examiner’s decision rejecting claims 2, 4, and 5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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