Ex Parte BORTHAKUR et alDownload PDFPatent Trials and Appeals BoardJun 27, 201915453038 - (D) (P.T.A.B. Jun. 27, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/453,038 03/08/2017 Swarnal BORTHAKUR 129948 7590 07/01/2019 SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (VT) 5005 E. McDowell Road, MD A 700 Phoenix, AZ 85008 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 ATTORNEY DOCKET NO. CONFIRMATION NO. APT20 l 3-0098CO 1 US 5442 EXAMINER HALIYUR, PADMA ART UNIT PAPER NUMBER 2698 NOTIFICATION DATE DELIVERY MODE 07/01/2019 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): patents@onsemi.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SWARNAL BORTHAKUR, VLADIMIR KOROBOV, and MARC SULFRIDGE Appeal 2018-008276 Application 15/453,038 1 Technology Center 2600 Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-15. Claims 1 7 and 18 have been canceled, and claims 16, 19 and 20 are allowed. 2 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Semiconductor Components Industries, LLC. App. Br. 2. 2 See Final Act. 10. Appeal 2018-008276 Application 15/453,038 STATEMENT OF THE CASE3 The Invention Appellants' disclosed and claimed inventions relate to "imaging systems with through-oxide vias in first and second integrated circuit dies." Spec. ,-i 2. Exemplary Claims Claims 1 and 7, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. An image sensor package comprising: an image sensor die having first and second opposing surfaces; a metal structure on the first surface of the image sensor die· ' a signal processing die bonded to the second surface of the image sensor die; and a through-oxide via that extends through the image sensor die and into the signal processing die, wherein the through-oxide via electrically connects the signal processing die to the metal structure. 7. An integrated circuit package, comprising: a first die; a second die attached to the first die; and a via that extends through the first die and into the second die and that electrically connects the first die to the second die. 3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed May 25, 2018); Reply Brief ("Reply Br.," filed Aug. 8, 2018); Examiner's Answer ("Ans.," mailed June 22, 2018); Final Office Action ("Final Act.," mailed Feb. 7, 2018); and the original Specification ("Spec.," filed Mar. 8, 2017). 2 Appeal 2018-008276 Application 15/453,038 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Tsai et al. ("Tsai") US 2012/0292730 Al Nov. 22, 2012 Rejection on Appeal Claims 1-15 stand rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Tsai. Final Act. 4. CLAIM GROUPING Based on Appellant's arguments (App. Br. 10-16), we decide the appeal of the anticipation rejection of claims 1-6 on the basis of illustrative claim 1; and we decide the appeal of the anticipation rejection of claims 7, 8, and 10-15 on the basis of representative claim 7. We decide the appeal of separately argued claim 9, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). We agree with particular arguments advanced by Appellants with respect to anticipation rejection of claims 1-6 for the specific reasons discussed below. However, we disagree with Appellants' arguments with respect to rejection of claims 7-15, and we incorporate herein and adopt as our own for this rejection: (1) the findings and reasons set forth by the Examiner in the 3 Appeal 2018-008276 Application 15/453,038 action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis as follows. 1. § 102(a)(l) Rejection of Claims 1-6 Issue 1 Appellants argue (App. Br. 4-10; Reply Br. 2-4) the Examiner's rejection of claim 1 under 35 U.S.C. § 102(a)(l) as being anticipated by Tsai is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses an image sensor package that includes, inter alia, "a through-oxide via that extends through the image sensor die and into the signal processing die, wherein the through-oxide via electrically connects the signal processing die to the metal structure," as recited in claim 1? Analysis Appellants contend: [C]laim 1 recites a through-oxide via that extends through an image sensor die and into a signal processing die. Tsai makes no mention of a through-oxide via that extends through a first die and into a second die, let alone a through-oxide via that extends through an image sensor die and into a signal processing die, as claimed. Tsai therefore also fails to show or suggest "a through-oxide via that extends through the image sensor die and into the signal processing die, wherein the through-oxide via electrically connects the signal processing die to the metal structure," as recited in claim 1. App. Br. 8-9 ( emphasis added). 4 Appeal 2018-008276 Application 15/453,038 In response, the Examiner further explains that "Tsai in Fig[.] 7 and ,ioo 15 clearly discloses this feature." Ans. 13. However, contrary to the Examiner's findings, we agree with Appellants' arguments (App. Br. 8-9) and find, by a preponderance of evidence, and as shown below, Tsai's via, represented by opening 270 in Fig. 7, does not extend through element 210 ( or 220), which the Examiner had mapped to the claimed and recited "image sensor die." Final Act. 4-5; See Tsai, Fig. 7. 212 .,_.1 217 'f_; Fig. 7! _2J(j Ml Mc ,30 MJ Mn "FIG[. ] 7 illustrate[ s a] diagrammatic cross-sectional side view[] of one embodiment of a semiconductor device at [ an end-]stage[] of fabrication according to the method of FIG. l." Tsai ,i 6. Therefore, on this record, we find the Examiner has not shown anticipation by Tsai of at least the contested limitation of claim 1. Accordingly, we reverse the Examiner's§ 102 rejection of independent 5 Appeal 2018-008276 Application 15/453,038 claim 1, and dependent claims 2-6 which stand with claim 1. See Claim Grouping, supra. 2. § 102(a)(l) Rejection of Claims 7-15 Issue 2 Appellants argue (App. Br. 10-14; Reply Br. 4-5) the Examiner's rejection of claim 7 under 35 U.S.C. § 102(a)(l) as being anticipated by Tsai is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses an integrated circuit package that includes, inter alia, "a first die," "a second die attached to the first die," and "a via that extends through the first die and into the second die and that electrically connects the first die to the second die," as recited in claim 7? Appellants contend Tsai fails to show or suggest "a first die" and "a second die attached to the first die," as recited in claim 7. App. Br. 12-13. Appellants also argue "Tsai makes no mention of a via that extends through a first die and into a second die, let alone where the via electrically connects the first and second dies, as claimed." App. Br. 13. We agree with the Examiner's findings and broadest reasonable interpretation of the claim terms.4 In reviewing the record, we are not persuaded the Examiner's claim interpretation is overly broad or unreasonable, because Appellants do not point to any limiting definition, in the claim, or in the Specification, that would preclude the Examiner's 4 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 6 Appeal 2018-008276 Application 15/453,038 construction of the terms "die" and "via" (Ans. 10-11) and the reading of these limitations on Tsai. See Ans. 11-13. We find the scope of the construed and contested limitations broadly read on Tsai's device substrates, layers and via (i.e., a Vertical Interconnect Access that forms an electrical connection between layers in a physical electronic circuit that goes through the plane of one or more adjacent layers). We are not persuaded by Appellants' arguments because independent claim 7 merely recites a first and second die in broad terms. We are also unpersuaded by Appellants' arguments because the dies recited in claim 7 are interpreted as reading on any via that connects two dies. Therefore, we find a preponderance of the evidence supports the Examiner's finding of anticipation. Accordingly, we sustain the Examiner's rejection of independent claim 7, and grouped claims 8, 10-15, which fall therewith. See Claim Grouping, supra. 3. § 102(a)(l) Rejection of Claim 9 Issue 3 Appellants argue (App. Br. 14-16; Reply Br. 5) the Examiner's rejection of dependent claim 9 under 35 U.S.C. § 102(a)(l) as being anticipated by Tsai is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses "[t]he integrated circuit package defined in claim 8, wherein the second die comprises signal processing circuitry," as recited in claim 9? Appellants argue, "[ m Jerely providing interconnections is not the same as performing signal processing. Tsai's interconnection structure is 7 Appeal 2018-008276 Application 15/453,038 therefore not the same as signal processing circuitry as alleged in the Office Action." App. Br. 15. The Examiner points out that Appellants have not defined the claim term "signal processing circuitry" in the Specification or claims. The Examiner, under a broad but reasonable interpretation, defines this term as "the analysis, interpretation and manipulation of signals." Ans. 13-14. The Examiner also concludes: In ,ioo 10, Tsai discloses that the "additional circuitry and input/ output" which provides and operation environment for the sensors and for supporting external communications with the sensors. It is well known in the art that "operation environment" involves processing of signals and therefore Examiner's interpretation of Tsai's disclosure in ,ioo 14 is not unreasonable. For these reasons, rejections of Claim 9 is reasonable and should therefore be sustained. Ans. 14. We find Appellants have not pointed to any definition in their Specification that would indicate the Examiner's interpretation is inconsistent with their Specification. Moreover, Appellants do not point to any evidence of record in support of their contentions, but instead merely present attorney arguments. App. Br. 14-16, Reply Br. 5. We note attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).5 5 "Argument in the brief does not take the place of evidence in the record." In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). 8 Appeal 2018-008276 Application 15/453,038 We also note Appellants' arguments focus on the purportedfunctional differences between the device of claim 9 as compared to the functions taught in the prior art instead of the structure, instead of structural differences. Our reviewing court guides that the patentability of an apparatus "depends on the claimed structure, not on the use or purpose of that structure." Catalina Marketing Int'!. Inc. v. Coolsavings.com, Inc., 289 F.3d 801,809 (Fed. Cir. 2002); "[A] system claim generally covers what the system is, not what the system does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, on this record, we are not persuaded of error in the Examiner's reliance on Tsai as disclosing claim 9, and we sustain the Examiner's anticipation rejection of dependent claim 9. REPLY BRIEF To the extent the Appellants may advance new arguments in the Reply Brief (Reply Br. 1-6) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.4l(b)(2)), which Appellants have not shown. 9 Appeal 2018-008276 Application 15/453,038 CONCLUSIONS (1) The Examiner erred with respect to the anticipation rejection of claims 1-6 under 35 U.S.C. § 102(a)(l) over the cited prior art of record, and we do not sustain the rejection. (2) The Examiner did not err with respect to anticipation rejection of claims 7-15 under 35 U.S.C. § 102(a)(l) over the cited prior art of record, and we sustain the rejection. DECISION We reverse the Examiner's decision rejecting claims 1-6. We affirm the Examiner's decision rejecting claims 7-15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation