Ex Parte Davis et al

Board of Patent Appeals and Interferences

Mar 17, 2006

10408149 (B.P.A.I. Mar. 17, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JOHN G. DAVIS,
JOSEPH D. POOLE,
KRIS A. SLESINGER AND
MICHAEL C. WELLER
____________

Appeal No. 2005-2558
Application 10/408,149
______________

ON BRIEF
_______________

Before KIMLIN, WALTZ, and FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 26-44. A copy of each of
these claims is set forth in the attached appendix.
The examiner relies upon the following references as
evidence of unpatentability:
Mase et al. (Mase) 5,261,156 Nov. 16, 1993
Bearinger et al. (Bearinger) 5,611,884 Mar. 18, 1997
Schar 5,842,273 Dec. 1, 1998

Claims 26-44 stand rejected under 35 U.S.C. § 103 as being
obvious over Schar in view of Bearinger and Mase.
To the extent that appellants provide specific arguments
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regarding patentability, with respect to a particular claim, we
consider such claim in this appeal. See 37 CFR
§ 41.37(c)(1)(vii)(September 2004); formerly 37 CFR
§ 1.192(c)(7)(2003). Also see Ex parte Schier, 21 USPQ2d 1016,
1018 (Bd. Pat. App. & Int. 1991).

OPINION
We have carefully reviewed appellants’ brief and reply
brief, the examiner’s answer, and the evidence of record. This
review has led us to the following determinations.

I. The 35 U.S.C. § 103 rejection of claims 26-44

Claims 26, 34, 35, and 40

Beginning on page 5 of the brief1, appellants argue the
patentability of claims 26 and 35 (claim 34 depends upon claim 26
and claim 40 depends upon claim 35; hence appellants have grouped
these claims together).
Each of claims 26 and 35 recites a method for mounting a
component including a plurality of leads wherein the method
comprises, inter alia, aligning the component with the substrate
such that each lead is juxtaposed with its corresponding
conductive adhesive element. Figure 4 of appellants’
specification depicts the resulting electronic package.

1 We refer to the brief filed on February 18, 2005.
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Appellants first argue that Schar teaches away from the use
of leads, and refers to column 2, lines 34-35, wherein it is
disclosed the “the method ought to be lead-free and no-clean”.
Appellants also refer to column 5, lines 37-42 of Schar in this
regard. Brief, page 5. Appellants also point out that while the
examiner relies upon Bearinger for teaching that it is well known
in the art and conventional to utilize leads, Schar teaches away
from such use. Brief, pages 5-6. Appellants conclude that
“[t]hus, modifying Schar by adding leads as allegedly taught by
Bearinger would destroy Schar’s invention”. Brief, page 6.
We are not convinced by such argument for the following
reasons.
Firstly, while Schar teaches that the method “ought to be
lead-free”, we disagree with appellants that such a teaching
would have dissuaded one of ordinary skill in the art from using
leads in making an electronic component. In this context, we
consider the case of In re Gurley, 27 F.3d 551, 553, 31
U.S.P.Q.2d 1130, 1132 (Fed. Cir. 1994). The Court in In re
Gurley considered a “teaching away” as representing one of
several factors in ultimately affirming the board’s decision on
obviousness. Gurley claimed an epoxy-based printed circuit board
exhibiting bendable and shape retaining qualities. The board
sustained the examiner’s section 103 rejection of Gurley’s claims
over prior art that disclosed material for forming circuit boards
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similar to those of Gurley, except that the material was a
polyester imide-based resin rather than the epoxy resin claimed
by Gurley. The prior art did acknowledge that epoxy was known
for such use, but viewed epoxy-containing boards as inferior to
polyester-imide-containing boards. On appeal to the Federal
Circuit, Gurley argued that the prior art taught away from his
invention by describing epoxy-containing boards as inferior. The
Court, however, rejected this argument, stating that a “teaching
away” represents only one of a number of factors considered and
weighed in determining obviousness. Stressing the importance of
considering the “teaching away” in context, and according it
appropriate weight, the court held that a known or obvious
material does not become patentable simply because the art
described it as somewhat inferior. Id. In the instant case, we
determine that the teaching that the method “ought to be lead-
free” [emphasis added] is a preferred embodiment, and does not
teach away from using leads.
Next, beginning on page 8 of the answer, the examiner argues
that the bumps on the LGA disclosed in Schar can be considered
leads. Beginning on page 1 of the reply brief, appellants argue
that the bumps cannot be leads as recited in claims 26 and 35.2

2 Appellants also argue extensively this issue on pages 7-12 of the
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We determine that this issue is not relevant because, as stated,
supra, while Schar states that the method “ought to be lead-free”
(and, assuming, arguendo, that the bumps on the LGA disclosed in
Schar cannot be considered to fall under the definition of a
“lead”), such would not dissuade one skilled in the art from
using a plurality of leads in place of bumps in a method of
making an electronic package, especially in view of the teachings
of Bearinger (discussed further below).
Bearinger teaches a chip connection including a chip and
substrate and a conductive adhesive. See Figure 2 of Bearinger.
Figure 2 shows an interconnect (lead) on a substrate. The
conductive adhesive element is located between one of the
plurality of contact pads (bond pad) and the corresponding lead
(interconnect). Figure 3A also shows an embodiment having a
substrate, pad, contact adhesive, and balls, on a chip. The
balls correspond to leads. Figure 3B shows the adhesive is
located between the pad and the lead. Appellants do not dispute
that the configuration taught by Bearinger meets the claim
limitations in claim 26 and claim 35 regarding the plurality of
leads and the location of the conductive adhesive element.
With regard to other aspects of appellants’ claimed subject
matter, beginning on page 4 of the answer, the examiner states
that Schar teaches attaching a second substrate while the

brief, which we have fully considered.
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conductive adhesive is in an uncured or partially cured state, to
allow for testing and repair that can be performed at all stages
prior to final and complete curing. See column 3, at lines 35-39
of Schar. Answer, page 4. On page 5 of the answer, the examiner
states that Schar is silent regarding the step of partially
curing the adhesive after mounting the second substrate. The
examiner refers to Mase for teaching this aspect of the claimed
invention.
Beginning on page 8 of the reply brief, appellants argue
that because Schar teaches that Schars’ invention provides for
easy and flexible testing during all stages of assembly, there
would be no reason to modify Schar according to Mase because
Schar does not need such modification to achieve flexible testing
during all stages of assembly. We are not convinced by this
argument for the following reasons.
Schar teaches that the conductive adhesive can be partially
cured and the second substrate is attached. See column 3, lines
35-39. One of ordinary skill in the art would appreciate that
this could be achieved by applying the conductive adhesive in an
uncured state, followed by a step of partially curing the
conductive adhesive, followed by attachment of the second
substrate. Alternatively, this could be achieved by applying the
conductive adhesive in an uncured state, attaching the second
substrate, and then partially curing the conductive adhesive. We
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see no criticality regarding the order of these steps. As
pointed out by the examiner at the bottom of page 5 of the
answer, Mase teaches applying an adhesive, followed by mounting
of a chip, followed by partially curing the adhesive. Whether
the adhesive is partially cured before the chip is mounted, or
after the chip is mounted, the result is a chip attached to a
substrate by a partially cured adhesive. As stated, supra, Schar
teaches that a partially cured adhesive allows for testing and
repair to be performed at all stages prior to final and complete
curing. In this regard, we agree with the examiner’s statements
made in the paragraph bridging pages 12-13 of the answer.
In view of the above, we affirm the rejection of claims 26,
34, 35 and 40.

Claims 31 and 41
On page 14 of the brief, appellants argue that Schar in view
of Bearinger and Mase do not teach or suggest the features of
claims 31 and 41 regarding “determining whether the component is
defective or misaligned” and “replacing the component, if
defective, with a new component and adjusting the position of or
repositioning the component, if misaligned.” We disagree. On
page 14 of the answer, the examiner explains how Schar teaches
testing while the substrates are adhered with the partially cured
adhesive and repairing if necessary, and refers to column 3,
lines 35-39 and 59-65. We agree with the examiner that testing
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and repairing suggests adjusting the positioning or replacing a
component.
In view of the above, we affirm the rejection of claims 31
and 41.

Claims 28, 37, 32 and 42
Beginning on page 11 of the reply brief, appellants state
that Schar in view of Bearinger and Mase do not suggest the
feature of claims 28 and 37 “wherein heating each of the
conductive adhesive elements is performed at 50 to 105ºC for 10
minutes to 1 hour.” Appellants also argue that the applied art
does not suggest the features of claims 32 and 42 “wherein
performing the full cure comprises heat curing the conductive
adhesive elements at 50 to 200ºC for 15 seconds to 12 hours.”
It is the examiner’s position, as set forth on page 14 of
the answer, that parameters such as time and temperature for
curing would have been within the mechanical skill of the one
skilled in the art. We agree. As stated by the examiner, such
parameters would depend on the type of adhesive utilized, for
example. We note that where general conditions of the appealed
claim are disclosed in the prior art, it is not inventive to
discover optimum or workable ranges by routine experimentation,
and appellants have the burden of proving any criticality. In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-19 (CCPA 1980); In
re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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In view of the above, we affirm the rejection of claims 28,
37, 32 and 42.

Claims 27, 29, 30, 36, 38, 39, and 44
It is the examiner’s position that it is well known in the
art to use heat, radiation exposure, or chemical exposure to
partially and fully cure a conductive adhesive. Answer, page 15.
In response, beginning on page 12 of the reply brief,
appellants argue that the examiner does not discuss why it would
have been obvious to modify Schar to use heat or radiation
exposure or chemical exposure.
We determine that the examiner has explained that because it
is well known and conventional in the art to use various types of
methods to partially and fully cure a conductive adhesive (such
as heat, radiation exposure or chemical exposure, and appellants’
do not dispute this position), it would have been obvious to use
such methods in the method of Schar.
In view of the above, we affirm the rejection of claims 27,
29, 30, 36, 38, 39 and 44.

Claims 33 and 43
On page 15 of the answer, the examiner states that with
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regard to claims 33 and 43, one skilled in the art would have
readily appreciated applying additional conductive adhesive
elements while repairing if such was necessary in order to ensure
an adequate electrical connection between each lead and contact
site.
On page 13 of the reply brief, appellants argue that the
examiner’s position represents no more than the examiner’s
personal opinion because the examiner does not support this
position by evidence from the prior art. We are not persuaded by
this argument for the following reasons.
Claims 33 and 43 require that additional conductive adhesive
elements are applied before replacing the new component on the
substrate and before repositioning the misaligned component to
its correct position such that each additional conductive
adhesive element is on each contact pad.
Appellants are correct that the applied art does not
specifically discuss adding more conductive adhesive elements
before replacing or repositioning. We believe, however, that it
is within the purview of one skilled in the art to modify the
amount of adhesive needed to ensure sufficient bonding of the
parts. As such, we agree with the examiner’s statement made at
the bottom of page 15 of the answer where the examiner states
that the point of having an adhesive is to ensure adequate
adhesion, and one skilled in the art would have been motivated to
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determine if the repair process required applying additional
adhesive.
In view of the above, we therefore affirm the rejection of
claims 33 and 43.

II. Conclusion
The 35 U.S.C. § 103 rejection of claims 26-44 as being
obvious over Schar in view of Bearinger and Mase is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(effective Sept. 13, 2003; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat., Office 21 (Sept. 7, 2004)).

AFFIRMED
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Edward C. Kimlin )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Beverly A. Franklin )
Administrative Patent Judge )

BAF/cam

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SCHMEISER, OLSEN & WATTS
3 Lear Jet Lane
Suite 201
Latham, NY 12110

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APPENDIX

26. A method for mounting a component including a plurality of
leads on a substrate including a plurality of contact pads such
that each contact pad corresponds to at least one of the
plurality of leads, the method comprising the following steps
performed in the indicated order:

a) applying a plurality of conductive adhesive elements
such that each conductive adhesive element is on each contact
pad;

b) aligning the component with the substrate such that each
lead is juxtaposed with its corresponding conductive adhesive
element and each conductive adhesive element is located between
one of the plurality of contact pads and its corresponding at
least one lead; and

c) performing a partial cure of the conductive adhesive
elements, the partial cure of the conductive adhesive elements
providing temporary mechanical connections that affix the
plurality of contact pads to their corresponding leads while
allowing for adjustment in relative positions of the plurality of
contact pads and their corresponding leads such that electrical
connections suitable for testing are provided between the
plurality of contact pads and their corresponding leads.

27. The method of claim 26, wherein performing the partial cure
of the conductive adhesive elements comprises heating each of the
conductive adhesive elements.

28. The method of claim 27, wherein heating each of the
conductive adhesive elements is performed at 50 to 105°C for 10
minutes to 1 hour.

29. The method of claim 26, wherein performing the partial cure
of the conductive adhesive elements comprises radiatively
exposing each of the conductive adhesive elements.

30. The method of claim 26, wherein performing the partial cure
of the conductive adhesive elements comprises chemically exposing
each of the conductive adhesive elements.

31. The method of claim 26, further comprising the following
steps in the indicated order, after the step of performing a
partial cure:
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d) testing the component and determining whether the
component is defective or misaligned;

e) replacing the component, if defective, with a new
component and adjusting the position of or repositioning the
component, if misaligned; and

f) performing a full cure of the conductive adhesive
elements, the full cure of the conductive adhesive elements
providing permanent fixed mechanical and electrical connections
between the plurality of contact pads and their corresponding
leads.

32. The method of claim 31, wherein the step of performing a
full cure comprises heat curing the conductive adhesive elements
at 50 to 200°C for 15 seconds to 12 hours.

33. The method of claim 31, wherein additional conductive
adhesive elements are applied before replacing the new component
on the substrate and before repositioning the misaligned
component to its correct position such that each additional
conductive adhesive element is on each contact pad.

34. The method of claim 26, wherein the substrate comprises a
circuit card.

35. A method for mounting a component including a plurality of
leads on a substrate including a plurality of contact pads such
that each contact pad corresponds to at least one of the
plurality of leads, the method comprising the following steps
performed in the indicated order:

applying a plurality of uncured conductive e adhesive
elements such that each conductive adhesive element is on each
contact pad and is not in mechanical contact with the component;

aligning the component with the substrate such that each
lead is juxtaposed with its corresponding conductive adhesive
element and each conductive element is located between one of
plurality of contact pads and its corresponding at least one
lead; and

after said applying and aligning steps, performing a partial
cure throughout each of the conductive adhesive elements while
each conductive adhesive element is on its respective contact pad
and is not in mechanical contact with the component, the partial
cure of the conductive adhesive elements providing temporary
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mechanical connections that affix the plurality of contact pads
to their corresponding leads while allowing for adjustment in
relative positions of the plurality of contact pads and their
corresponding leads such that electrical connections suitable for
testing are provided between the plurality of contact pads and
their corresponding leads.

36. The method of claim 35, wherein performing the partial cure
comprises heating each of the conductive adhesive elements
throughout each of the conductive adhesive elements while each
conductive adhesive element is on its respective contact pad and
is not in mechanical contact with the component.

37. The method of claim 36, wherein heating each of the
conductive adhesive elements is performed at 50 to 105°C for 10
minutes to 1 hour.

38. The method of claim 35, wherein performing the partial cure
comprises radiatively exposing each of each if the conductive
adhesive elements throughout each of the conductive adhesive
elements while each conductive adhesive element is on its
respective contact pad and is not in mechanical contact with
component.

39. The method of claim 35, wherein performing the partial cure
comprises chemically exposing each of each of the conductive
adhesive elements throughout each of the conductive adhesive
elements while each conductive adhesive element is on its
respective contact pad and is not in mechanical contact with the
component.

40. The method of claim 35, wherein the substrate comprises a
circuit board.

41. The method of claim 35, further comprising:

testing the component and determining whether the component
is defective or misaligned;

replacing the component, if defective, with a new component
and adjusting the position of or repositioning the component, if
misaligned; and

performing a full cure of the conductive adhesive elements
throughout each adhesive element, the full cure of the conductive
adhesive elements providing permanent fixed mechanical and
electrical connections between the plurality of contact pads and
their corresponding leads.
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42. The method of claim 41, wherein performing the full cure
comprises heat curing the conductive adhesive elements at 50 to
200°C for 15 seconds to 12 hours.

43. The method of claim 41, wherein additional conductive
adhesive elements are applied before replacing the new component
on the substrate and before repositioning the misaligned
component to its correct position such that each additional
conductive adhesive element is on each contact pad.

44. The method of claim 41, wherein performing the full cure
comprises heating each of the conductive adhesive elements.