Ex Parte Ano

Patent Trial and Appeal Board

Aug 16, 2013

13008158 (P.T.A.B. Aug. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KAZUAKI ANO
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Appeal 2013-007462
Application 13/008,158
Technology Center 2800
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Before RICHARD TORCZON, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant
1
seeks our review under 35 U.S.C. § 134(a) of the
Examiner‟s final rejection of claims 1-14. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
2

1
Real Party in Interest is Texas Instruments Inc.
2
Our decision refers to Appellant‟s Appeal Brief filed December 20, 2012
(“App. Br.”); Examiner‟s Answer mailed February 26, 2013 (“Ans.”); and
the original Specification filed January 18, 2011 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant‟s invention relates to a method of fabricating a
semiconductor device of a ball grid array (BGA) type having solder joints
made of a contact pad and an alloy layer metallurgically attached to the
contact pad across a pad area. Appellant‟s Spec., ¶¶[0004]-[0005] and
Abstract.
Illustrative Claims
Claim 1 is the only independent claim on appeal. Claim 1 is
illustrative of the invention, and is reproduced below:

1. A method of fabricating a semiconductor device to
improve joint strength, comprising:

depositing a nickel layer on a copper contact pad on a
surface of a substrate to which a semiconductor chip is affixed;

depositing a tin-containing solder layer on the nickel
layer;

dissolving the entire nickel layer at an elevated
temperature forming an alloy layer; and

metallurgically attaching the alloy layer to the copper
contact pad on one side, the contact area free of regions of
unalloyed nickel, and the solder layer on the opposite side.

Evidence Considered
Chalco US 6,444,562 B1 Sep. 3, 2002
Kao US 2003/0219623 A1 Nov. 27, 2003
Liu US 2003/0234453 A1 Dec. 25, 2003
Yamamoto US 6,879,041 B2 Apr. 12, 2005
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Examiner’s Rejections
(1) Claims 1-3 and 9-10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Kao. Ans. 3-4.
(2) Claims 4-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kao and Chalco. Ans. 4-5.
(3) Claims 6-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kao. Ans. 5-6.
(4) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kao and Liu. Ans. 6-7.
(5) Claim 11-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kao and Yamamoto. Ans. 7-8.

ISSUES
Based upon our review of the record, the arguments proffered by
Appellant, and the findings of the Examiner, the dispositive issues on appeal
are:
(1) Whether the Examiner erred in rejecting claims 1-3 and 9-10
under 35 U.S.C § 102(b) as being anticipated by Kao. In particular, the
issue turns on whether Kao discloses all the elements of Appellant‟s
independent claim 1. App. Br. 11-12.
(2) Whether the Examiner erred in rejecting claims 4-8 and 11-14
under 35 U.S.C § 103(a) as being unpatentable over Kao and other cited
prior art, including Chalco, Liu, and Yamamoto. In particular, the issue
turns on whether Kao teaches away from Appellant‟s claimed invention and,
therefore, cannot be properly combined with Chalco, Liu, and Yamamoto in
order to arrive at Appellant‟s claimed invention. App. Br. 12-14.
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ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellant‟s
arguments that the Examiner has erred.
We disagree with Appellant‟s conclusion. The Examiner has
provided a comprehensive response, supported by a preponderance of
evidence, to each of the contentions raised by Appellant. We highlight and
address specific findings and arguments for emphasis as follows.

§ 102(b) Rejection of Claims 1-3 and 9-10
Appellant contends that the Examiner erred in rejecting claims 1-3
and 9-10 under 35 U.S.C. § 102(b) because:
(1) Kao describes in the Background Section that
“solder(primary tin)-copper alloy lowers its joint performance”
and “the strength of the solder joint will be very low.” App. Br.
11 (citing Kao, ¶0006]);

(2) Kao intends that copper-tin alloy is an unpreferred
alloy to improve solder joint reliability. (App. Br. 11); and

(3) In contrast, Appellant‟s embodiments “provides
[sic] for no existence of solid Ni layer and the bonding area
dominated by copper-tin alloy as a preferred metal to improve
the stress.” (App. Br. 11-12).

We are not persuaded. At the outset, we note that the Examiner has
made extensive fact findings regarding Kao with respect to each limitation
of the argued claims. Ans. 3-4 and 8-9. In response thereto, Appellant
simply points out a certain disadvantage associated with the existing solder
joint structure as disclosed in Kao‟s Background Section, that is, the
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“solder(primary tin)-copper alloy lowers its joint performance” and the
“copper-tin alloy is an unpreferred alloy to improve solder join reliability.”
App. Br. 11.
Appellant does not contest the Examiner‟s factual findings regarding
Kao, as evidenced from the absence of a Reply Brief. Nor does Appellant
argue that Kao fails to disclose any limitation of Appellant‟s independent
claim 1. Appellant‟s Brief is otherwise silent as to why Examiner‟s factual
findings are in error. Appellant‟s silence does not persuade us that the
Examiner has erred.
Moreover, “[a] reference is no less anticipatory if, after disclosing the
invention, the reference then disparages it . . . . [T]he question whether a
reference „teaches away‟ from the invention is inapplicable to an
anticipation analysis.” Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150
F.3d 1354, 1361 (Fed.Cir. 1998). As such, evidence of disparagement,
disadvantage, or teaching away from the use of a copper-tin alloy in an
existing solder joint structure as described in Kao‟s Background Section is
not applicable to an anticipation analysis under 35 U.S.C. § 102(b).
For the reasons set forth above, Appellant has not persuaded us of
reversible error in the Examiner‟s anticipation rejection of independent
claim 1 and its dependent claims 2-3 and 9-10, which were not separately
argued, under 35 U.S.C. § 102(b).

§ 103(a) Rejections of Claims 4-8 and 11-14
Appellant contends that the Examiner erred in rejecting claims 4-8
and 11-14 under 35 U.S.C. § 103(a) because Kao teaches away from
Appellant‟s claimed invention and, therefore, cannot be properly combined
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with Chalco, Liu, and Yamamoto in order to arrive at Appellant‟s claimed
invention. App. Br. 12-14. In particular, Appellant argues that Kao teaches
away from the use of a copper-tin alloy, and teaches that the copper-tin alloy
is an unpreferred alloy to improve solder joint reliability. App. Br. 13.
However, we do not find these arguments persuasive. Our reviewing
court has said:
“[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference‟s disclosure is unlikely to be
productive of the result sought by the applicant.”

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52 (1966)). A reference does not teach away, however,
if it merely expresses a general preference for an alternative invention but
does not “criticize, discredit, or otherwise discourage” investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Moreover, a reference that “teaches away” does not per se preclude a prima
facie case of obviousness, but rather the “teaching away” of the reference is
only a factor to be considered in determining unobviousness. In re Gurley,
at 553.
Here, Kao simply suggests a weak solder joint if the copper is allowed
to be consumed quickly, as correctly found by the Examiner. Ans. 10 (citing
Kao, ¶0006]). Appellant has not presented any evidence or arguments to
persuade us that Kao and any other cited prior art, including Chalco, Liu,
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and Yamamoto would disparage or otherwise discourage one of ordinary
skill in the art from the path described in the claims of the application, i.e.,
the subject matter of Appellant‟s claims 3-8 and 11-14. Thus, we do not
find that Kao, Chalco, Liu, and Yamamoto teach away from the claimed
invention. Rather, we agree with the Examiner‟s findings and conclusion
that:
“Based on the above discussed and because Kao, Chalco, Liu,
and Yamamoto disclose the same field of invention, it would
have been obvious to one of ordinary skill in the art at the time
the invention was made to employ and modify the teachings as
taught by Kao, Chalco, Liu and Yamamoto to achieve a desired
result structure with improved joint strength as claimed.”

Ans. 12.
For the reasons set forth above, Appellant has not persuaded us of
reversible error in the Examiner‟s findings and the Examiner‟s obviousness
rejections of claims 3-8 and 11-14 under 35 U.S.C. § 103(a).

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting: (1) claims 1-3 and 9-10 under 35 U.S.C. § 102(b); and (2)
claims 3-8 and 11-14 under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner‟s final rejections of claims 1-14.
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).

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AFFIRMED

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