Ex Parte AnoDownload PDFPatent Trial and Appeal BoardAug 16, 201313008158 (P.T.A.B. Aug. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KAZUAKI ANO ____________________ Appeal 2013-007462 Application 13/008,158 Technology Center 2800 ____________________ 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.”). Appeal 2013-007462 Application 13/008,158 2 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 Appeal 2013-007462 Application 13/008,158 3 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. Appeal 2013-007462 Application 13/008,158 4 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 Appeal 2013-007462 Application 13/008,158 5 “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 Appeal 2013-007462 Application 13/008,158 6 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, Appeal 2013-007462 Application 13/008,158 7 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). Appeal 2013-007462 Application 13/008,158 8 AFFIRMED alw Copy with citationCopy as parenthetical citation