Ex Parte Baldonado et al

Board of Patent Appeals and Interferences

Nov 8, 2004

10066421 (B.P.A.I. Nov. 8, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HEROLD L. BALDONADO,
CELINE R. MANDAPAT
and PAUL G. PEREZ
__________
Appeal No. 2004-2226
Application No. 10/066,421
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Herald M. Baldonado et al. originally took this appeal from
the final rejection (mailed February 26, 2003) of claims 1, 2 and
4 through 22. After the appellants canceled claim 22 and
submitted a main brief (filed September 2, 2003), the examiner
issued an Office action (mailed November 18, 2003) reopening
prosecution and entering superseding rejections of claims 1, 2
and 4 through 21. Pursuant to 37 CFR § 1.193(b)(2)(ii), the
appellants then submitted a supplemental brief (filed February
19, 2004), implicitly requesting that the appeal be reinstated.
Appeal No. 2004-2226
Application NO. 10/066,421
2
Tacitly granting the request, the examiner entered an answer
(mailed June 8, 2004), noted a reply brief (filed July 27, 2004)
submitted by the appellants and forwarded the application to this
Board for review of the new rejections of claims 1, 2 and 4
through 21, all of the claims currently pending in the
application.
THE INVENTION
The invention relates to “the fabrication and packaging of
semiconductor devices, specifically a method and system of
bonding wires from a semiconductor die to a lead using interposer
pads” (specification, page 1). Representative claim 1 reads as
follows:
1. A method and system of wire bonding a semiconductor die
to a lead, comprising steps of:
attaching a first end of a first bonding wire to a
semiconductor die with a ball bond;
attaching a second end of the first bonding wire to an
interposer pad with a stitch bond;
attaching a first end of a second bonding wire to the
interposer pad with a ball bond; and
attaching the second end of the second bonding wire to the
lead with a stitch bond.
THE REJECTIONS
Claim 7 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellants regard as the invention.
Appeal No. 2004-2226
Application NO. 10/066,421
1 The reasons for the 35 U.S.C. § 112, first paragraph,
rejection appear in the answer under two separate statements of
rejection. For purposes of this appeal, we shall treat these
separate statements as one rejection since the statutory basis
for each is the same. Also, the examiner’s comment on page 5 in
the answer that “[c]laim 5 is objected to as being dependent upon
a rejected base claim, but would be allowable if rewritten in
independent form” is inconsistent with the standing rejections of
this claim and is therefore presumed to be erroneous.
3
Claims 1, 2 and 4 through 21 stand rejected under 35 U.S.C.
§ 112, first paragraph, as containing subject matter which was
not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the appellants, at
the time the application was filed, had possession of the claimed
invention.
Claims 1, 2 and 4 through 21 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by U.S. Patent No. 6,232,561 to
Schmidt et al. (Schmidt).
Attention is directed to the main, supplemental and reply
briefs and to the answer for the respective positions of the
appellants and the examiner regarding the merits of these
rejections.1
DISCUSSION
I. Petitionable matter
In the supplemental brief, the appellants appear to raise as
an issue in the appeal the propriety of the objection to the
Appeal No. 2004-2226
Application NO. 10/066,421
2 It is unclear why the examiner did not include claim 14
along with claim 7 in this rejection since both contain the
language viewed as problematic by the examiner.
4
drawings made in the superseding Office action. As this
objection is not directly connected with the merits of any
rejection of claims, it is reviewable by petition to the Director
rather than by appeal to this Board (see In re Hengehold, 440
F.2d 1395, 1403-1404, 169 USPQ 473, 479 (CCPA 1971)), and hence
will not be further addressed in this decision.
II. The 35 U.S.C. § 112, second paragraph, rejection of claim 7
We shall summarily sustain the standing 35 U.S.C. § 112,
second paragraph, rejection of claim 7 since the appellants have
not challenged such on the merits (see page 2 in the supplemental
brief and page 1 in the reply brief).2
III. The 35 U.S.C. § 112, first paragraph, rejection of claims 1,
2 and 4 through 21
As pointed out above, this rejection rests on the examiner’s
position that claims 1, 2 and 4 through 21 contain subject matter
which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the
appellants, at the time the application was filed, had possession
of the claimed invention. This reasoning identifies the relevant
statutory provision as the written description requirement of
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Application NO. 10/066,421
5
§ 112, ¶ 1. The test for compliance with the written description
requirement is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that the
inventors had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). The content of the drawings may also be considered in
determining compliance with the written description requirement.
Id.
The first area of concern to the examiner involves the
various limitations in the claims requiring attachment of the
ends of the first and second bonding wires by either a stitch
bond or a ball bond. By way of example, claim 1 requires the
first end of the first wire to be attached to the semiconductor
die with a ball bond, the second end of the first wire to be
attached to the interposer pad with a stitch bond, the first end
of the second wire to be attached to the interposer pad with a
ball bond and the second end of the second wire to be attached to
the lead with a stitch bond. Page 4 in the original
specification describes a first end of a first wire 20 as being
attached to the semiconductor die with a ball bond 12, a first
Appeal No. 2004-2226
Application NO. 10/066,421
6
end of a second wire 24 as being attached to the interposer pad
with a ball bond 23 and a second end of the second wire as being
attached to the lead with a stitch bond 25. Although lacking an
express description of the bond by which the second end of the
first wire 20 is attached to the interposer pad, the original
disclosure as a whole, and particularly the descriptions of wire
13 in Figure 1 and wire 20 in Figure 2 as having one end attached
with a ball bond and the other end attached with a stitch bond,
would reasonably convey to the artisan that the second end of the
first wire 20 is attached to the interposer pad with a stitch
bond. Thus, the disclosure of the application as originally
filed would reasonably convey to the artisan that the appellants
had possession at that time of subject matter meeting the various
limitations in the claims relating to the attachment of the ends
of the first and second bonding wires by either a stitch bond or
a ball bond.
The examiner also voices concern about the limitations in
the claims pertaining to the interposer electro-less substrate,
the ball grid array, and the electrically floating nature of the
interposer pad(s) (see page 4 in the answer). The first two
features find express support in the original disclosure (see
pages 2 and 5 in the specification) and the third finds implicit
Appeal No. 2004-2226
Application NO. 10/066,421
3 The examiner has not challenged the appellants’ assertion
in the supplemental brief that the term “electrically floats”
means that “the interposer pad is not connected to a voltage
source” (page 3).
7
support in the illustration in the drawings of interposer pads 21
as not being connected to a voltage source.3
Finally, the examiner refers to subject matter which
previously had been recited in claims 3, 16 and 22, but is not
currently recited in the claims. Such unclaimed subject matter
does not provide any basis to reject the current claims under the
written description requirement.
In light of the foregoing, we shall not sustain the standing
35 U.S.C. § 112, first paragraph, rejection of claims 1, 2 and 4
through 21.
IV. The 35 U.S.C. § 102(a) rejection of claims 1, 2 and 4 through
21 as being anticipated by Schmidt
Schmidt discloses an assembly carrier 1 comprising a
plurality of connections 5 on an electronic component 2 (e.g., an
integrated circuit), a plurality of conductor paths 3 spaced from
the connections 5, a plurality of connection surfaces 4 disposed
between the connections 5 and the conductor paths 3, wires 6
bridging respective connections 5 and connection surfaces 4, and
wires 7 bridging respective connection surfaces 4 and conductor
paths 3. Each wire 6 is attached to its connection 5 with a ball
Appeal No. 2004-2226
Application NO. 10/066,421
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bond 6a and to its connection surface 4 with a wedge (i.e.,
stitch) bond 6b, and each wire 7 is attached to its connection
surface 4 with a wedge bond 7b and to its conductor path 3 with a
ball bond 7a.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
In the present case, Schmidt does not meet the limitation in
independent claim 1, or the corresponding limitations in
independent claims 8 and 16, requiring a bonding wire to be
attached to a lead with a stitch bond. Schmidt’s bonding wires 7
are attached to their associated leads (conductor paths 3) by
ball bonds 7a.
Thus, Schmidt does not disclose each and every element of
the invention recited in independent claims 1, 8 and 16.
Therefore, we shall not sustain the standing 35 U.S.C. § 102(a)
rejection of claims 1, 8 and 16, and dependent claims 2, 4
through 7, 9 through 15 and 17 through 21, as being anticipated
by Schmidt.
Appeal No. 2004-2226
Application NO. 10/066,421
9
V. New ground of rejection
The following rejection is entered pursuant to 37 CFR
§ 41.50(b).
Claims 4, 10 and 19 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter the appellants regard as the
invention.
The second paragraph of § 112 requires claims to set out and
circumscribe a particular area with a reasonable degree of
precision and particularity. In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977). In determining whether this
standard is met, the definiteness of the language employed in the
claims must be analyzed, not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
Claims 4, 10 and 19 recite a substrate which is “electro-
less.” The underlying specification provides no guidance as to
what this means. The appellants acknowledge that the ordinary
and accustomed definition of “electro-less” is “[t]he deposition
of a metallic coating, usually nickel, on a component by chemical
means rather than by electroplating” (see the supplemental brief
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Application NO. 10/066,421
10
and the exhibit appended thereto), but insist that as used in the
instant specification and claims 4, 10 and 19, “electro-less”
should be construed literally as meaning “insulating” (see page 4
in the main brief). The appellants, however, have not advanced
any authority supporting this latter meaning. Given the lack of
any guidance in the specification as to the meaning of the term
“electro-less,” the apparent lack of any authority for the argued
meaning and the conflicting conventional definition, the use of
this term in claims 4, 10 and 19 renders these claims indefinite.
SUMMARY
The decision of the examiner:
a) to reject claim 7 under 35 U.S.C. § 112, second
paragraph, is affirmed;
b) to reject claims 1, 2 and 4 through 21 under 35 U.S.C.
§ 112, first paragraph, is reversed; and
c) to reject claims 1, 2 and 4 through 21 under 35 U.S.C.
§ 102(a) as being anticipated by Schmidt is reversed.
In addition, a new rejection of claims 4, 10 and 19 is
entered pursuant to 37 CFR § 41.50(b).
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1)
provides "[a]ppellant may file a single request for rehearing
Appeal No. 2004-2226
Application NO. 10/066,421
11
within two months from the date of the original decision of the
Board."
In addition to affirming the examiner's rejection(s) of one
or more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b). 37 CFR § 41.50(b) provides "[a]
new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .
Should the appellants elect to prosecute further before the
examiner pursuant to 37 CFR § 41.50(b)(1), in order to preserve
the right to seek review under 35 U.S.C. §§ 141 or 145 with
respect to the affirmed rejection, the effective date of the
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Application NO. 10/066,421
12
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 2004-2226
Application NO. 10/066,421
13
AFFIRMED-IN-PART; 37 CFR § 41.50(b)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2004-2226
Application NO. 10/066,421
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MIKE SKREHOT
TEXAS INSTRUMENTS INCORPORATED
M/S 3999
DALLAS, TX 75265