Ex Parte Chow

Patent Trial and Appeal Board

Mar 21, 2014

11694913 (P.T.A.B. Mar. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SENG GUAN CHOW
____________

Appeal 2012-001807
Application 11/694,913
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001807
Application 11/694,913
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On June 29, 2010, the Examiner finally rejected claims 1, 15, and 17-
19 of Application 11/694,913 under 35 U.S.C. § 102(e) as anticipated.
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
Claim 15 is representative of the ’913 application’s claims and is
reproduced below:
15. An integrated circuit package system comprising:
a substrate having a contact pad;
a first conductor having a first melting point, a first width, and a
first height over the contact pad;
a second conductor having a second melting point, a second
width, and a second height over the first height of the first
conductor with the first melting point higher than the second
melting point and the second width less than or substantially
equal to the first width; and
a first device over the second conductor.
(App. Br. 18 (Claims App’x).)

1 STATS ChipPAC Ltd. is identified as the real party in interest. (App.
Br. 3.)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 15, and 17-19 are rejected under 35 U.S.C. § 102(e) as
anticipated by Lee.2 (Ans. 5.)
2. Claims 1, 15, and 17-19 are rejected under 35 U.S.C. § 102(e) as
anticipated by Lin.3 (Ans. 6.)
DISCUSSION
Appellant argues for reversal of these rejections on the basis of the
limitations in independent claims 1 and 15. Because we affirm the rejection
of the independent claims, we also affirm the rejection of dependent claims
17-19.
Rejection 1. Appellant argues that Lee does not anticipate claim 1
because it does not describe the step of “mounting a first device over the
second conductor. Similarly, Appellant argues that Lee does not anticipate
claim 15 because it does not describe an integrated circuit system
comprising “a first device over the second conductor.” (App. Br. 10-13.)
For clarity, we shall focus our discussion on claim 15, but our analysis also
applies to Appellant’s arguments regarding claim 1.
The Examiner found that Lee’s Figure 5B and the corresponding
portions of Lee’s Specification describe the claimed first device located over
the second conductor. (Ans. 6.) In particular, the Examiner found that Lee

2 U.S. Patent Application Publication No. 2008/0296761 A1, published Dec.
4, 2008.
3 U.S. Patent Application Publication No. 2009/0267213 A1, published Oct.
29, 2009.
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Application 11/694,913
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described a device in which a second substrate is located over and mounted
to the second conductor. (Id. (discussing substrate 520 in Lee’s Figure 5B).)
For the following reasons, we are not persuaded that the Examiner’s finding
is erroneous.
Appellant argues that the Examiner’s finding is erroneous because
substrate 520 is not a “device” and that the Examiner adopted an
unreasonably broad definition of the term “device.” (App. Br. 10-13.) In
particular, Appellant argues that the term “device” is defined in ¶¶ 0058-
0059 of the ’913 application’s Specification. (See, e.g., App. Br. 11.) We
reproduce these paragraphs in full:
[0058] The plan view depicts the integrated circuit package
system 100 as a system-in-package (SiP) system. As an
example, the integrated circuit package system 100 includes
first devices 102, a second device 104, and a third device 106,
and a fourth device 108 over a substrate 110, such as a silicon
substrate, a ceramic substrate, or a printed circuit board
substrate.
[0059] The first devices 102 may be a number of different
devices. For example, the first devices 102 may be resistors,
capacitors, inductors, or other passive components. The first
devices 102 are preferably surface mount devices. For
illustrative purposes, the first devices 102 are shown
substantially the same, although it is understood that the first
devices 102 may differ from each other. The first devices 102
connect with contact pads 112 in the substrate 110. The second
device 104, the third device 106, and the fourth device 108
connect to bond pads 114 in the substrate 110 with
interconnects 116, such as bond wires.
Specification ¶¶ 0058-0059 (emphasis added).
Applicants are free to act as their own lexicographers, but any novel
definitions they choose to adopt must be clearly indicated as such. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ([A]
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patentee may choose to be his own lexicographer . . . as long as the special
definition of the term is clearly stated in the patent specification . . . .”)
Appellant has not satisfied this requirement. Paragraphs 0058 and
0059 of the Specification describe exemplary embodiments of various
components that may be the claimed device. There is no clear indication
that these examples are an exhaustive list of things that can be the claimed
device or that the term “device” is limited to the listed items.
Rejection 2. Appellant advances two arguments for reversal of this
rejection. (App. Br. 13-16.) The first is substantially the same as that
discussed in connection with Rejection 1. As discussed above, we this
argument to be unpersuasive.
Appellant’s second argument is that the Examiner erred in finding that
Lin inherently describes the location of a first device over the second
conductor of the structure shown in Figure 3. (App. Br. 15.) The Examiner
found that Lee’s Figure 3 does not expressly describe a first device over the
second conductor, but that the attachment of a device was inherent. (Ans.
6.) The Examiner explains that Lin’s Figure 5 and the associated text
describe the use of interconnect bumps like that shown in Figure 3 to attach
an integrated circuit to a substrate or circuit board. (Id. at 6.) Appellant has
not persuaded us that the Examiner’s reasoning in this regard is erroneous.
Thus, we affirm the rejection of claims 1, 15, and 17-19 of the ’913
application as anticipated by Lin.
CONCLUSION
We have affirmed the Examiner’s rejections of claims 1, 15, and 17-
19 as anticipated by Lee and by Lin.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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