Ex parte Conru et al.

Board of Patent Appeals and Interferences

May 17, 1999

08296269 (B.P.A.I. May. 17, 1999)

Application for patent filed August 25, 1994. According1
to the appellants, this application is a continuation of
07/951,292, filed September 09, 1992, now abandoned, which is
a continuation 07/625,410, filed December 11, 1990, now
abandoned, which is a continuation of 07/493,654, filed March
15, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte H. WARD CONRU,
and STEPHEN G. STARR
_____________
Appeal No. 96-1705
Application 08/296,2691
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and HECKER, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1705
Application No. 08/296,269
2

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 2-6, 8 and 9, which
constitute all the claims remaining in the application.
The disclosed invention pertains to an encapsulated
semiconductor module of the type in which a lead frame is
bonded to a semiconductor chip. The lead frame has a
plurality of conductive fingers cut from sheet stock and
having proximal and distal ends. The proximal ends of the
conductive fingers are provided with coined bonding regions
having a thickness less than the thickness of the sheet stock.
Representative claim 2 is reproduced as follows:
2. An encapsulated semiconductor module comprising:
a semiconductor chip having a major surface with
terminals thereon disposed within an encapsulated material;
a lead frame comprising a plurality of self
supporting unitary, discrete, and continuous lead frame
conductive fingers, formed of metal sheet stock extending over
said major surface of said chip at spaced locations from said
terminals,
the proximal end of said conductive fingers arranged
in a fixed spacing and provided with a coined bonding region
adapted to provide a wire bond contact area, and
Appeal No. 96-1705
Application No. 08/296,269
Our understanding of Yabe and Tsukide is based on2
translations provided by the Ralph McElroy Translation Company
3
the distal ends of said conductive fingers fanning
out from said chip and said encapsulating material, and
adapted to connect with signal and voltage lines,
characterized by the coined bonding region on each
of said proximal ends, of said fingers, being separated from
the tip of the proximal end of said fingers by an uncoined
region, and
discrete electrical wire means bonded to the coined
bonding regions on said conductive fingers and said terminals
and electrically connecting said conductors to said terminals.
The examiner relies on the following references:
Pashby et al. (Pashby) 4,862,245 Aug. 29, 1989
Lim 5,164,815 Nov. 17, 1992
(effectively filed Dec. 22,
1989)
Yabe 62-232147 Oct. 12, 1987
(Japanese Kokai)
Tsukide et al. (Tsukide) 63-283053 Nov. 18, 1988
(Japanese Kokai)

Claims 8 and 9 stand rejected under 35 U.S.C. § 102(e)
as anticipated by the disclosure of Lim or, in the
alternative, under 35 U.S.C. § 103 as obvious over the
teachings of Lim. Claims 2-6 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Pashby in view
of Yabe and Tsukide . 2
Appeal No. 96-1705
Application No. 08/296,269
for the United States Patent and Trademark Office. Copies of
these translations are attached to this decision.
4
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, the appellants’ arguments set forth in the brief
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that Lim does not fully meet or suggest the
obviousness of the invention as recited in claims 8 and 9. We
are also of the view that the evidence relied upon and the
Appeal No. 96-1705
Application No. 08/296,269
5
level of skill in the particular art would not have suggested
to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 2-6. Accordingly, we
reverse.
We consider first the rejection of claims 8 and 9
under 35 U.S.C. § 102(e) as anticipated by Lim or under 35
U.S.C.
§ 103 as unpatentable over Lim. Anticipation is established
only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S.
1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner indicates how he reads claims 8 and 9 on
Lim on pages 3-4 of the answer. There, the examiner asserts
that “[a]s seen in Figure 2b, the degree of thickness of the
Appeal No. 96-1705
Application No. 08/296,269
6
lead frame conductors vary from the proximal ends to the
distal ends.” Appellants dispute that Figure 2b of Lim
discloses the thickness limitation of the proximal ends as
recited in claims 8 and 9 [brief, pages 13-19]. With respect
to this particular limitation of claims 8 and 9, we are in
agreement with appellants.
Claims 8 and 9 each recites that the proximal ends of
the conductors have a thickness less than “said selected
thickness.” The antecedent basis for “said selected
thickness” is the thickness of the metal sheet stock from
which the lead frame is formed. The thickness identified by
the examiner runs in a direction perpendicular to the
thickness of the metal stock sheet. Thus, all the examiner
has identified is that the proximal ends of the conductors in
Lim have a width which is less than the width of the distal
ends of the conductors. No comparison of thicknesses with the
thickness of the metal sheet stock is indicated in Lim. In
fact, Lim’s Figure 2c suggests that there is no change in
thickness as claimed between the proximal ends of the
conductors and the metal sheet stock. Therefore, Lim does not
fully meet the invention as required by 35 U.S.C. § 102.
Appeal No. 96-1705
Application No. 08/296,269
7
We now consider the alternative rejection of claims 8
and 9 under 35 U.S.C. § 103 as being unpatentable over the
teachings of Lim. 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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Appeal No. 96-1705
Application No. 08/296,269
8
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
As we noted above in our discussion of the rejection
of claims 8 and 9 under 35 U.S.C. § 102, the examiner has
misconstrued the scope of the invention as recited in these
claims. The limitation of the thickness of the proximal end
of the conductors being less than the thickness of the metal
sheet stock is not met by the disclosure of Lim. Since the
examiner treated this limitation as being fully met by the
disclosure of Lim, the examiner has not addressed the
obviousness of the difference between this claim limitation
and the teachings of Lim. Therefore, the examiner has failed
to establish a prima facie case of the obviousness of claims 8
and 9. Accordingly, we do not sustain the examiner’s
rejection of claims 8 and 9.
We now consider the rejection of claims 2-6 under
35 U.S.C. § 103 as being unpatentable over the teachings of
Appeal No. 96-1705
Application No. 08/296,269
9
Pashby in view of Yabe and Tsukide. Pashby teaches an
encapsulated semiconductor module similar to what appellants
disclosed as being the admitted prior art. The examiner
recognized that the module of Pashby did not have coined
regions as recited in independent claims 2 and 3. The
examiner cited Yabe and Tsukide as teaching the use of lead
frame conductors having coined bonding regions and uncoined
regions. The examiner concluded that it would have been
obvious to the artisan to modify the Pashby module to have
coined and uncoined regions as taught by Yabe and Tsukide
[answer, pages 4-5].
Appellants argue that Yabe is not within the art of
wire bonded lead frames. Appellants also argue that the
Pashby device was designed to avoid the very connection
problems accepted in Tsukide. Thus, appellants argue that
there is absolutely no motivation to modify the Pashby device
to have conductors with coined and uncoined regions except in
an effort to reconstruct this invention in hindsight [brief,
pages 7-13]. We agree with appellants’ arguments set forth in
the brief.
We agree with appellants that Yabe is not concerned
Appeal No. 96-1705
Application No. 08/296,269
10
with a lead frame encapsulated with a semiconductor chip.
Therefore, there is no reason for the artisan to look to Yabe
to improve the connections in Pashby. Even if the TAB lead 7
in Yabe were considered to be the conductor of claims 2 and 3,
the “coined” or concave region of TAB lead 7 is not used for
bonding in Yabe as required by the last clause of claims 2 and
3.
We also agree with Appellants that the disparate
solutions to the connection problem employed by Pashby and
Tsukide do not lend themselves to being combined absent an
attempt to reconstruct appellants’ invention in hindsight.
The problem solved by the Tsukide device is not present in
Pashby, and, therefore, there would be no motivation to
combine the teachings of Tsukide with the teachings of Pashby.
Thus, we cannot accept the examiner’s rationale as to why the
artisan would seek to modify Pashby to include conductors with
coined and uncoined regions based on the teachings of Tsukide.
Therefore, we do not sustain the examiner’s rejection of
claims 2-6.
Appeal No. 96-1705
Application No. 08/296,269
11
In summary, we have not sustained either of the
examiner’s rejections of the claims. Therefore, the decision
of the examiner rejecting claims 2-6, 8 and 9 is reversed.
REVERSED
)
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Stuart N. Hecker )
Administrative Patent Judge )
Appeal No. 96-1705
Application No. 08/296,269
12
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