Ex Parte Chiu et al

Patent Trial and Appeal Board

Mar 25, 2013

12172778 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/172,778 07/14/2008 George Liang-Tai Chiu YOR920060318US2
14-02-01
5605
68397 7590 03/25/2013
THE LAW OFFICES OF ROBERT J. EICHELBURG
HODAFEL BUILDING, SUITE 200
196 ACTON ROAD
ANNAPOLIS, MD 21403
EXAMINER
HOANG, QUOC DINH
ART UNIT PAPER NUMBER
2892
MAIL DATE DELIVERY MODE
03/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE LIANG-TAI CHIU and SUNG-KWON KANG
____________

Appeal 2010-010326
Application 12/172,778
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM,
and ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010326
Application 12/172,778

2
STATEMENT OF THE CASE
Appellants are appealing claims 1-25. Appeal Brief 2. We have
jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
The invention is directed to a thermal interface material (TIM) with
“reduced thermal resistance to improve cooling of electronic devices such as
a semiconductor chip.” Specification 4.

Illustrative Claim
1. A process comprising joining a first surface and a second
surface where said first surface comprises an initially non-solderable
surface which comprises;

coating said first surface with a solder-adhesion layer to
produce a solder-adhesion layer on said first surface;

providing a TIM composition comprising solderable heat-
conducting particles in a bondable resin matrix, at least some of said
solderable heat-conducting particles comprising a solder surface;

placing said TIM composition between said first surface and
said second surface to extend between and be contiguous with both
said second surface and said solder-adhesion layer on said first
surface;

heating said TIM composition sufficiently to;

(a) solder at least some of said solderable heat-conducting
particles to one another;

Appeal 2010-010326
Application 12/172,778

3
(b) solder at least some of said solderable heat-conducting
particles to said solder-adhesion layer on said first surface; and

adhesively bonding said resin matrix to said first surface and
said second surface.

Rejection on Appeal
Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimizu (U.S. Patent Number 7,025,906 B2; issued April
11, 2006) and Dani (U.S. Patent Number 7,332,807 B2; issued February 19,
2008). Answer 3-6.

Issue on Appeal
Do Shimizu and Dani, either alone or in combination, disclose a
process wherein first and second surfaces are joined in which the first
surface is coated with a solder-adhesion layer?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.

Appeal 2010-010326
Application 12/172,778

4
Appellants contend that the rejection is an “attempt to substitute the
electrically conductive and thermally conductive solder-coated particles of
Shimizu for the dielectric coated particles of Dani which have obstructed
electrical conductivity, and reduced heat conductivity because of the
dielectric coating.” Appeal Brief 8. Appellants further argue that, “Dani
produces particles that are the diametric opposite not only of Shimizu, but
also the present invention. The rejection has to take into account the entire
teachings of the Dani reference, warts and all. The examiner cannot pick and
choose only those teachings that bolster the rejection.” Id.
Appellants’ arguments pertaining to the substitution of the particles
between the compositions of Shimizu and Dani are neither persuasive nor
pertinent to the combination of Shimizu and Dani in reference to rejection of
claims 1 and 11 because Dani discloses a semiconductor die wherein
backside metallurgy 124 is applied to assist the TIM layer in adhering to the
die. Dani, column 2, lines 55-65. As the Examiner finds:
The 103 rejection is to incorporate or to include the
coating layer (124) of Dani into the Shimizu's process, not
to substitute as argued by the appellant. Also, Dani,
column 3, lines 17-24, clearly discloses the coating layer
(124) is a metal (titanium, AgSn, CuSn, AgCu,
AgCuSn,...), which is a good electrical conductive
material, and does not obstruct electrical conductivity at
all. Furthermore, the examiner respectfully submits that by
adding the coating layer (124) of Dani to the method of
Shimizu does not change the principle of operation of the
primary reference or render the reference inoperable for its
intended purpose, but rather it would have improved the
device as discussed in the above rejection. See MPEP §
2143.01.

Answer 7.
Appeal 2010-010326
Application 12/172,778

5
Therefore we sustain the Examiner’s rejection of independent claims
1 and 11 for the reasons stated above.
Neither independent claim 1 nor independent claim 11 specifies the
composition of solderable heat-conducting particles within the TIM layer.
Appellants did not argue that the combination of Shimizu and Dani failed to
disclose the claimed composition of the particles and therefore we will
sustain the Examiner’s rejection of dependent claims 1-10 and 12-25. See
Appeal Brief 4-5. See also Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI
2010) (“Precedential”) (“[T]he Board will generally not reach the merits of
any issues not contested by an appellant.”).1

DECISION
The obviousness rejection of claims 1-25 is affirmed.

1 Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008). “It is not
the function of [the U.S. Court of Appeals for the Federal Circuit] to
examine the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.” In re Baxter Travenol Labs., 952
F.2d 388, 391 (Fed. Cir. 1991). “Similarly, it is not the function of this
Board to examine claims in greater detail than argued by an appellant,
looking for distinctions over the prior art.” Ex Parte Shen, No. 2008-0418,
2008 WL 4105791 at * 9 (BPAI 2008).

Appeal 2010-010326
Application 12/172,778

6
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

pgc