Ex Parte Datta et al

Board of Patent Appeals and Interferences

Jun 27, 2003

09301889 (B.P.A.I. Jun. 27, 2003)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 15

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MADHAV DATTA,
PETER A. GRUBER, JUDITH M. RUBINO,
CARLOS J. SAMBUCETTI and GEORGE F. WALKER
______________

Appeal No. 2003-1331
Application 09/301,889
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ON BRIEF
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Before WARREN, LIEBERMAN and PAWLIKOWSKI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellants, in the brief, and based on our
review, find that we cannot sustain the grounds of rejections advanced on appeal: claims 1 and
23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Millican et al.
(Millican) and Lin et al. (Lin); claim 5 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Millican and Lin, as applied to appealed claims 1 and 23, and further in
combination with Mis et al.; and claims 8 through 11 under 35 U.S.C. § 103(a) as being
Appeal No. 2003-1331
Application 09/301,889
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unpatentable over the combination of Millican and Lin, as applied to appealed claims 1 and 23,
and further in combination with Andricacos et al.1,2
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071, 1074-76,
5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The dispositive issue with respect to all grounds of rejection in this appeal involves the
interpretation to be made of the language of appealed independent claims 1 and 23. Appellants
submit that the claimed method “flattens solder bumps,” and thus does not encompass the
method of Lin (brief, page 7; see also pages 3 and 5). The examiner contends that the scope of
the claims “is not so limited,” but does not state how the claims are to be interpreted in light of
the specification in order to encompass the method of Lin (answer, page 8; see also pages 4-5).
We find that, when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d 1367, 1372,
54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), the plain language of appealed independent claim 1, on which appealed claims 5 and
8 through 11 depend, specifies a method for testing IC chips with probe needles on flat solder
bumps comprising at least the steps of, inter alia, first forming solder bumps, which have a

1 Claims 2, 6, 7, 12 through 20, 22 and 24 are also of record and have been withdrawn from
consideration by the examiner under 37 CFR § 1.142(b). Claims 1, 2, 5 through 20 and 22
through 24 are all of the pending claims. A correct copy of appealed claims 1, 5, 8 through 11
and 23 is in the appendix to the brief.
2 Answer, pages 4-7.
Appeal No. 2003-1331
Application 09/301,889
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definite, sustained shape, and then substantially flattening the top surface of each of such formed
solder bumps with a platen. Appealed independent claim 23 contains similar language.
Thus, we agree with appellants that Lin, in using flat disk 50 to force conductive paste 30,
which can be a solder paste, into openings 20 on top of bond pads 12 as well as to remove excess
paste 30 as shown in Lin FIG 4 (col. 3, lines 61-67, and col. 4, line 25), does not first form a
solder bump and then flatten that solder bump with a platen, that is, form a flat surface on a
solder bump, but rather forces solder paste into a specific space to form a solder bump with a flat
surface. Compare the solder bumps prepared by the Lin methods as illustrated by Lin FIGs. 4
and 7, with the solder bumps modified by the claimed method as illustrated in the specification
Figs.
Accordingly, because the applied prior art would not have led one of ordinary skill in this
art to the claimed method as a whole, we reverse all of the grounds of rejection.
The examiner’s decision is reversed.
Reversed

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
PAUL LIEBERMAN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

Randy W. Tung
Appeal No. 2003-1331
Application 09/301,889
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Tung & Associates
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