Ex parte Brearley et al.

Board of Patent Appeals and Interferences

Dec 18, 2001

08576185 (B.P.A.I. Dec. 18, 2001)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILLIAM BREARLEY,
LAERTIS ECONOMIKOS, PAUL F. FINDEIS,
KIMBERLEY A. KELLY, BOUWE W. LEENSTRA,
ARTHUR G. MERRYMAN, ERIC D. PERFECTO,
CHANDRIKA PRASAD, JAMES P. WOOD
and ROY YU
______________
Appeal No. 1999-2403
Application 08/576,185
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and KRASS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 14-21. Of these claims, the examiner
has indicated the allowability of claims 15-17 at page 2 of the
answer. Appellants have canceled claims 1-13. Therefore, only
claims 14 and 18-21 remain on appeal.
Representative claim 14 is reproduced below:
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14. A method of depositing solder ball connection to input-
output (I/O) pad on a surface of a substrate, comprising the
steps of:
(a) depositing solder in a cavity of a depositor, wherein
said depositor has a protrusion in said cavity,
(b) mating said depositor to said substrate having said I/O
pad such that said solder is in contact with said I/O pad,
(c) reflowing said solder such that a solder ball is formed
between said I/O pad and said protrusion, and a contact surface
is formed between said protrusion and said solder ball,
(d) separating said depositor from said substrate a
sufficient distance to separate said solder ball from said
protrusion, and
(e) reflowing said solder ball such that said contact
surface becomes spherical.
The following reference is relied on by the examiner:
Kushima 4,906,823 March 6,
1990
The following reference is relied on by the Board:
Aulicino 5,658,827 August 19,
1997
(filing date Oct. 31, 1995)
Claims 18-21 stand rejected under the written description
portion of the first paragraph 35 U.S.C. § 112, the examiner
alleging that appellants did not have possession of the claimed
invention in these claims at the time this application was filed.
These claims were added by the amendment filed on June 22, 1998,
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which amendment also added two paragraphs to page 10 of the
specification as filed. Claims 14 and 18-21 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Kushima.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the briefs and the answer for the
respective details thereof.
OPINION
We reverse both rejections of the claims on appeal and
introduce our own new rejection under 35 U.S.C. § 103 of claims
14 and 18-21 in accordance with the provisions of 37 CFR §
1.196(b).
We turn first to the rejection of claims 18-21 under the
written description portion of 35 U.S.C. § 112, first paragraph.
The manner in which the specification as filed meets the
written description requirement is not material. The requirement
may be met by either an express or an implicit disclosure. In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). It is
permissible to add inherent properties or characteristics of the
invention to the disclosure and claims. Kennecott Corp. V.
Kyocera Int’l, Inc., 835 F.2d 1419, 1422, 5 USPQ2d 1194, 1197
(Fed. Cir. 1987), cert. denied, 486 U.S. 1008 (1988). An
invention claimed need not be described in ipsis verbis in order
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Application 08/576,185
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to satisfy the written description requirement of 35 U.S.C. §
112, first paragraph. In re Lukach, 442 F.2d 967, 969, 169 USPQ
795, 796 (CCPA 1971). The question is not whether an added word
was the word used in the specification as filed, but whether
there is support in the specification for the employment of the
word in the claims, that is, whether the concept is present in
the original disclosure. See
In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 311, 336 (CCPA
1973).
Following this guidance, it is readily apparent to us that
appellants had an adequate basis within the original disclosure
to have later claimed the subject matter of claims 18-21.
Appellants’ prior art discussion at pages 1 and 2 of the
specification as filed indicates that it was known in the art for
implementing controlled collapse chip connection (C4)
semiconductor interconnection structures to have used a fixture
including a so-called depositor within which solder had been
placed subject to being reflowed. This depositor permitted the
fixture apparatus of the prior art to place solder balls on a
structure to receive them. It is thus apparent that upon the
application of the proper reflow temperature the depositor
released the solder within its cavities in order to form the
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solder balls upon the receiving structure. This is essentially
set forth in lines 1-13 of the originally filed claim 11, which
amounts to the preamble of this Jepson-type claim, thus impliedly
admitting that such structures within this portion of the
preamble were admitted prior art.
The paragraph bridging pages 1 and 2 of the specification as
filed details known problems in the prior art with the prior art
depositor devices indicating that after the reflow operation has
been performed there was no true solder ball shape achieved
because there remains thereon an impression of the depositor
structure. This assessment is essentially duplicated in the
first paragraph, lines 1-22, at page 8 of the specification has
filed.
We reverse the rejection because there is ample evidence in
the specification and claims as filed that depositor structures
subject to releasing solder at reflow temperatures were
essentially known in the art and relied upon by the appellants in
their approach to disclosing the presently claimed invention.
Appellants’ reliance upon Aulicino in the amendatory material at
page 10 of the specification as filed is not regarded as being an
introduction of new matter. This reference itself is prior art
to the presently filed application because of its filing date of
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October 31, 1995, and does indicate within its four corners that
the elements recited in questioned dependent claims 18-21 were
then known in the art anyway. The discussion at columns 1-3 of
this reference indicates that it was known in the art to utilize
titanium, molybdenum or graphite as a material (claim 18) which
was non-wettable by solder thus permitting its release when
heated. This discussion in the short paragraph bridging columns
7 and 8 indicates that the composition of the solder was known in
the art. As such, the temperature necessary to permit reflow
operation as set forth in dependent claims 19-21 was a well-known
physical property in the art as well. Moreover, the examiner’s
reliance upon Kushima indicates as well that all these features
were known in the art as of its patent date of March 6, 1990 with
an effective filing date of June 3, 1988.
When all this is considered in its entirety, we conclude
that the specification as filed has reasonably conveyed to us
that appellants implicitly had possession of the subject matter
of dependent claims 18-21 on appeal when taken from an artisan’s
perspective. Therefore, we reverse the rejection of claims 18-21
under the written description portion of the first paragraph of
35 U.S.C. § 112.
We also reverse the rejections of claims 14 and 18-21 under
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35 U.S.C. § 103 as being anticipated by Kushima. We are
satisfied that the examiner has provided evidence in Kushima of
the teachings of clauses (a) through (c) of claim 14 on appeal,
which is consistent with what appellants have admitted in the
prior art anyway according to our outline of the specification as
filed earlier in this opinion. There is, however, no teaching in
Kushima of the remaining clauses (d) and (e). According to the
features recited essentially at column 4 in the summary of
Kushima and the corresponding more detailed discussion at column
6 of this reference, there is no separating feature analogous to
clause
(d) nor is there an additional reflow operation in clause (e) of
claim 14 taught in this reference. There would apparently be no
need for such according to the teachings of Kushima anyway
because the requirement of the second reflow operation at the end
of claim 14 on appeal of achieving a spherical shape of the
solder balls is achieved with a single reflow operation as
reflected in the noted portions of column 4 and column 6 of
Kushima and generally indicated in process Figure 4(c). Because
we do not sustain the rejection for these reasons of independent
claim 14, the rejection of the remaining claims 18 through 21 on
appeal must also be reversed.
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Application 08/576,185
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As indicated earlier in this opinion, we introduces a new
rejection under 35 U.S.C. § 103 of claims 14 and 18-21 in view of
the earlier noted portions of the specification as filed as to
what appellants have indicated was in the prior art, further in
view of Aulicino. The earlier paragraph in this opinion relating
to the bridging paragraphs at columns 1 and 2 of the
specification as filed and the noted paragraph at page 8 of the
specification as filed indicate there was a known problem in the
art as to the deformation of the solder balls according to the
prior art approach. It appears
to us that Aulicino is somewhat representative of these
admissions.
Thus, clauses (a) through (c) were known in the art as to claim
14.
Because the prior art left an impression of the depositor upon
the solder ball structure according to the prior art approach,
this led to the unpredictability in the subsequent solder ball
connections in prior art C4 connection operations for
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semiconductor devices and components as set forth generally at
specification page 2, lines
12-18. This is consistent with the similar discussion at page 8
of the specification as filed at lines 14-22.
It appears to us that the artisan would have found it
obvious within 35 U.S.C. 103 to have separated the depositor from
the underlying substrate receiving the solder balls and performed
a subsequent reheating or reflowing operation as is conventional
in the art to achieve the needed true spherical or complete
solder ball shape as set forth in clauses (d) and (e) of
independent claim 14 on appeal. It is known that eutectic solder
forms spheres when heated on metalized pads. See Aulicino column
1, line 66 to column 2, line 14 and specification page 7, lines
30-34. As indicated earlier, the subject matter of dependent
claims 18-21 was also well known in the art and taught in
Aulicino as noted by us earlier in this opinion as to the
features recited in these claims.
In summary, we have reversed the rejection of claims 18-21
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under the written description portion of 35 U.S.C. § 112 and also
have reversed the rejection of claims 14 and 18-21 under 35
U.S.C.
§ 102. We have also introduced a new rejection of claims 14 and
18-21 under 35 U.S.C. § 103 in accordance with the provisions of
37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of
judicial review.”
37 CFR § 1.196(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 proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
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Application 08/576,185
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No time period for taking any subsequent action in
connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED
37 CFR § 1.196(b)

James D. Thomas )
Administrative Patent Judge )
)
)
)
Kenneth W. Hairston ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Errol A. Krass )
Administrative Patent Judge )
JDT/cam
Aziz M. Ahsan
Intellectual Property Law
IBM Corporation Dept. 18G
Building 300-482 2070 Route 52
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Application 08/576,185
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Hopewell Junction, NY 12533-6531