Ex Parte Choi

Board of Patent Appeals and Interferences

Jun 21, 2011

10864870 (B.P.A.I. Jun. 21, 2011)

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.
10/864,870 06/10/2004 Kyoung-sei Choi 2557-000242/US 7458
7590 06/21/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. Box 8910
Reston, VA 20195
EXAMINER
NGUYEN, THINH T
ART UNIT PAPER NUMBER
2818
MAIL DATE DELIVERY MODE
06/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KYOUNG-SEI CHOI
____________

Appeal 2009-007829
Application 10/864,870
Technology Center 2800
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 of the Final Rejection of
claims 1-16. See Appeal Brief 5. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We reverse.

Exemplary Claim
1. A flexible substrate for a semiconductor package comprising:
an insulating substrate in which a circuit pattern forming region having a
dented shape is formed;
Appeal 2009-007829
Application 10/864,870

2
a circuit pattern, disposed in the circuit pattern forming region of the
insulating substrate;
a plating portion, which covers a first portion of an upper surface of the
circuit pattern; and
a solder resist, which covers a second portion of the upper surface of the
circuit pattern.

Rejections on Appeal
Claims 1-3, 10, and 14-16 stand rejected under 35 U.S.C. § 102(b) as
being unpatentable over U.S. Patent Number 6,154,366 to Ma (“Ma”).
Claims 4-5, 7-9, and 11-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ma.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ma and Applicant Admitted Prior Art (“AAPA”) Figure
11.

Appellant’s Contention
Appellant contends that neither Ma nor the AAPA discloses “an
insulating substrate in which a circuit pattern forming region having a dented
shape is formed” as recited in claim 1. Appeal Brief 12.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Appeal 2009-007829
Application 10/864,870

3

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). If the Examiner's burden
is met, the burden then shifts to the Appellant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ISSUE
Did the Examiner err in rejecting independent claim 1over Ma?

ANALYSIS
It is the Examiner’s position that “dent” may be defined as “a
depression scratched or carved into a surface” or “make a depression into”.
Answer 10. Therefore, the Examiner believes that the Ma method for
making the flexible substrate inherently or implicitly discloses a circuit
pattern forming regions having dented shapes. Id.
Appellant argues “that one of ordinary skill in the art reading the
language of claim 1 in view of the specification, drawings, and prosecution
history, would understand that in an insulating substrate in which a circuit
pattern forming region having a dented shape is formed, the dented shape
does not extend all the way through the insulating substrate.” Appeal Brief
16. We find the Appellant’s argument to be persuasive.
Appeal 2009-007829
Application 10/864,870

4
The Examiner believes that a “via can stop in [the] middle of a layer
like a blind layer (as it is known in the art)” or it can stop when it is
connected to a circuit pattern under it and not extend all the way through an
associated layer. Answer 11. However, we find the Examiner’s belief to be
speculative and not appropriate for an anticipation rejection which requires,
“each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” See Verdegaal Bros.,
Inc., 814 F.2d at 631. Ma does not disclose a “dented shape” for forming a
circuit pattern. Ma only shows vias that extend all the way through the
layers (Fig. 1j, col. 4, ll. 5-8). Therefore we will not sustain the Examiner’s
rejection of independent claim 1 and dependent claims 2 to 16.

DECISION
The Examiner’s rejections of claims 1-16 are reversed.

REVERSED

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