Ex Parte Castro et al

Patent Trial and Appeal Board

Jan 16, 2015

12503553 (P.T.A.B. Jan. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ABRAM M. CASTRO
and MARK A. GERBER
__________

Appeal 2012-009108
Application 12/503,553
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is reproduced below from the Claims Appendix of the Appeal Brief
dated January 3, 2012 (“Br.”).1

1 Page numbers have been omitted from a portion of the Appellants’ Appeal Brief.
The page numbers referred to in this Decision on Appeal are the page numbers
automatically generated in the official file of the Application (eDAN).

Appeal 2012-009108
Application 12/503,553

2

1. An apparatus comprising:
a substrate having a first surface including conductive traces,
the traces having a first length and a first width, the first width being
uniform along the first length, and further a pitch to respective
adjacent traces;
a semiconductor chip having a second surface including contact
pads, the second surface facing the first surface spaced apart by a gap;
a conductive pillar of a height on each contact pad, the pillar
including a non-solder metal core and a solder body connecting the
core to the respective trace across the gap;
the pillar core having an oblong cross section across and
perpendicular to the height and parallel to the second surface; and
the oblong cross section having a second width and a second
length greater than the second width and greater than the first width.
The claims on appeal stand rejected as follows:2
(1) claims 1 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Rostoker3 in view of Shizuki4 and Morimoto5; and
(2) claim 17 under 35 U.S.C. § 103(a) as unpatentable over Rostoker in
view of Shizuki and Morimoto, and further in view of Lin.6

2 On page 1 of the Final Office Action dated September 9, 2011 (Form PTOL-326),
the Examiner states that claims 1–17 are rejected. However, claims 2–15 are not
included in the statement of the rejection and do not appear to be discussed in the
body of the rejection. See also Examiner’s Answer dated February 27, 2012
(“Ans.”), at 5–8 (grounds of rejection limited to claims 1, 16, and 17).
Nonetheless, the Appellants state that “Appellant respectfully appeals the
rejections of claims 1-17.” Br. 8. As discussed below, the § 103(a) rejection of
claim 1 (i.e., the sole independent claim pending in the instant Application) is not
sustained. Therefore, it is not necessary to decide whether claims 2–15 stand
rejected under § 103(a).
3 US 5,767,570, issued June 16, 1998.
4 US 5,914,536, issued June 22, 1999.
5 US 6,768,062 B2, issued July 27, 2004.
Appeal 2012-009108
Application 12/503,553

3

B. ISSUE
The dispositive issue on appeal is whether the Examiner reversibly erred in
concluding that the combination of Rostoker, Shizuki, and Morimoto renders
obvious an apparatus as recited in claim 1 comprising, inter alia, a conductive
pillar including a non-solder metal core and a solder body connecting the core to a
conductive trace wherein the non-solder metal core has an oblong cross section
“across and perpendicular to the height and parallel” to a surface of a
semiconductor chip, a length greater than its width, and a length greater than the
width of the conductive trace.7
C. DISCUSSION
The Examiner finds that the apparatus disclosed in Rostoker does not
disclose, inter alia, that bump contact 206 (corresponding to the claimed
conductive pillar) includes a non-solder core and a solder body as recited in claim
1. Ans. 6. Nonetheless, the Examiner finds that Shizuki discloses a semiconductor
device comprising pillar 15 which includes non-solder core 152 and solder body
151. The Examiner finds that pillar core 152 has an oblong cross section across and
perpendicular to the height and parallel to the surface of a semiconductor chip
wherein the length of the oblong cross section is greater than its width as recited in
claim 1. Ans. 6–7; see also Ans. 9 (explaining that the combination of Shizuki
Figs. 20A and 20B teaches that pillar core 152 has a rectangular cross section);
Appellants’ claim 2 (reciting that “the outline of the pillar core oblong cross
section is selected from a group including a rectangle, an ellipse, an oval, and a
football”).

6 US 5,468,999, issued November 21, 1995.
7 We note that claim 1 does not recite the relationship between the width of the
oblong cross section and the width of the conductive trace.
Appeal 2012-009108
Application 12/503,553

4

The Examiner finds that Rostoker as modified by Shizuki does not disclose
that the length of the oblong cross section of the pillar core is greater than the
width of a conductive trace as recited in claim 1. Ans. 7. The Examiner, however,
relies on Morimoto to satisfy this limitation. Ans. 7, 11. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art “to incorporate
the pillars of Shizuki et al. as modified by Morimoto into the device of Rostoker.”
Ans. 7.
The Appellants argue that Morimoto “teaches ‘solder bumps’ exclusively.”
Br. 11. The Examiner recognizes as much. Nonetheless, the Examiner finds that
solder bumps 3, illustrated in Morimoto Figure 5A, that do not melt during reflow
can be interpreted as non-solder pillar cores. Ans. 11.
The Examiner’s finding is not supported by the record. The purpose of
solder bumps 3 in the invention of Morimoto is to connect electrodes 2 and 12 by
melting solder bumps 3 in a reflow furnace. See Morimoto, col. 8, l. 66–col. 9, l.
20.
Suffice it to say that Morimoto does not disclose a conductive pillar which
includes a non-solder metal core. At best, the solder bumps described in Morimoto
correspond to the solder body recited in claim 1. Thus, absent the Appellants’
disclosure, there would have been no reason to modify non-solder pillar core 152 of
Shizuki as proposed by the Examiner. See In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984) (the mere fact that the prior art could be modified in the manner
proposed would not have made the modification obvious unless the prior art
suggested the desirability of the modification). For this reason, the § 103(a)
rejection of claims 1 and 16 is not sustained.
The Examiner does not rely on Lin to cure the deficiencies discussed above.
Therefore, the § 103(a) rejection of claim 17 is not sustained.
Appeal 2012-009108
Application 12/503,553

5

D. DECISION
The decision of the Examiner is reversed.
REVERSED

cdc