Ex parte Dennis et al.

Board of Patent Appeals and Interferences

Aug 25, 1999

08368926 (B.P.A.I. Aug. 25, 1999)

Application for patent filed January 5, 1995.1
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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM K. DENNIS and MASOOD MURTUZA
__________
Appeal No. 1997-0123
Application 08/368,9261
___________
ON BRIEF
___________
Before JERRY SMITH, FLEMING and RUGGIERO, Administrative
Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 3, 5, 6, 8, 9, 11, 12, and 14. Claims 1 and 2 have
Appeal No. 1997-0123
Application 08/368,926
Although Appellants have included claims 4, 7, 10, and2
13 in the reproduction of the appealed claims in the Appendix
to the Brief, these claims are not before us in this appeal.
2
been canceled. Claims 4, 7, 10, and 13 have been indicated by
the
Examiner as containing allowable subject matter but are
objected to as being dependent on a rejected claim .2
The claimed invention relates to a packaged semiconductor
chip with radial slots formed in an inner ring of contact lead
support film and cross-slots formed in the corner members of
an outer body of support film. Appellants state at page 4 of
the specification that the slots permit expansion of the
various portions of the support film and prevent breakage of
the contact leads due to differences in the thermal
coefficient of expansion between the semiconductor material
and the support film.
Claim 3 is illustrative of the invention and reads as
follows:
3. A packaged semiconductor chip comprising:
Appeal No. 1997-0123
Application 08/368,926
The Examiner additionally relies on a description of the3
admitted prior art at pages 2 and 3 of Appellants’
specification.
A copy of the translation provided by the U. S. Patent4
and Trademark Office, April 1999, is included and relied upon
for this decision.
3
a semiconductor chip;
a plurality of contact leads electrically connected to
the semiconductor chip;
an inner ring of film surrounding the semiconductor chip
and supporting a portion of the contact leads;
an outer body of film surrounding the inner ring of film
and connected to the inner ring of film by four corner members
of film material, the outer body of film supporting a further
portion of the contact leads;
and
each of the corner members comprising at least one cross-
slot extending inward from an edge of the corner member
partway across the corner member such that stress on the
contact leads resulting from the thermal expansion and
contraction of the semiconductor chip, the inner ring of film
material and the outer body of film material is reduced.
The Examiner relies on the following references :3
Nakamura et al. (Nakamura) 62-113458 May 25,
1987
(Japanese Kokai)4
Suetake 5,336,927 Aug. 09,
1994
Claims 3, 5, 6, 8, 9, 11, 12, and 14 stand finally
Appeal No. 1997-0123
Application 08/368,926
The Appeal Brief was filed May 23, 1996. In response to5
the Examiner’s Answer dated June 26, 1996, a Reply Brief was
filed August 26, 1996, which was acknowledged and entered by
the Examiner without further comment on October 7, 1996.

4
rejected under 35 U.S.C. § 103 as being unpatentable over
Nakamura in view of the admitted prior art and further in view
of Suetake.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answer for the5
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner, and the
evidence
of obviousness relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’
Appeal No. 1997-0123
Application 08/368,926
5
arguments set forth in the Briefs 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 the collective
evidence relied upon and the 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 3,
5, 6, 8, 9, 11, 12, and 14. Accordingly, we reverse.
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
Appeal No. 1997-0123
Application 08/368,926
6
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 Hospital Systems, Inc. v.
Montefiore Hospital, 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
Appeal No. 1997-0123
Application 08/368,926
7
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
At the outset, we note that the relevant portion of
independent claims 3, 6, 9, and 12 recites:
... each of the corner members
comprising at least one cross-slot
extending inward from an edge of the
corner member partway across the
corner member...
As asserted in the statement of the grounds of rejection
(Answer, page 3), the Examiner seeks to modify the combined
teachings of Nakamura and the admitted prior art by relying on
Suetake to supply the missing teaching of a film material
corner member having the requisite cross-slot feature. In the
Examiner’s view, the desire to prevent lead disconnections,
absorb mechanical stress, and increase yield by prevention of
tape scattering would
serve as motivating factors to the skilled artisan to modify
Nakamura and the admitted prior art with the teachings of
Suetake.
In response, Appellants assert that the Examiner has
Appeal No. 1997-0123
Application 08/368,926
8
failed to set forth a prima facie case of obviousness since
proper motivation for one of ordinary skill to make the
Examiner’s proposed combination has not been established. In
Appellants’ view (Brief, page 5), the skilled artisan would
not be motivated to employ the teachings of Suetake with
Nakamura and the admitted prior art since Suetake’s slot
configuration is directed to a totally different problem,
i.e., tape scrap minimization rather than strain relief.
Upon careful review of the applied prior art, we are in
agreement with Appellants’ stated position in the Brief. The
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Flitch, 972 F. 2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992). It is our view that, while a
showing of proper motivation does not require that a
combination of prior art teachings be made for the same reason
as Appellants to achieve the claimed invention, we can find no
motivation for the skilled artisan to apply Suetake’s cross
slot tape configuration to the combined film carrier of
Appeal No. 1997-0123
Application 08/368,926
9
Nakamura and the admitted prior art. There is nothing in the
disclosure of Nakamura or the admitted prior art to indicate
that minimization of material waste, the problem addressed by
Suetake, was ever a concern. It is our opinion that the only
basis for applying Suetake’s teachings to the combination of
Nakamura and the admitted prior art comes from an improper
attempt to reconstruct Appellants’ invention in hindsight.

We note that, in the responsive arguments portion at page
7 of the Answer, the Examiner attempts to respond to
Appellants’ arguments concerning Suetake’s lack of concern
with a strain relief problem by making reference to Suetake’s
mention of the term “yield.” The Examiner proceeds to supply
a dictionary definition of the term “yield” as relating to the
bending of an element under physical pressure. We are in
agreement, however, with Appellants’ arguments (Reply Brief,
pages 2 and 3) that the Examiner’s interpretation of Suetake’s
use of the term “yield” is in error. It is clear from our
reading of Suetake’s disclosure that the term “yield” is
intended to relate to an amount of useful material resulting
Appeal No. 1997-0123
Application 08/368,926
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from a manufacturing operation and not to a bending under
pressure as suggested by the Examiner.
Since we can find no basis in the applied prior art to
combine their teachings in the manner proposed by the
Examiner, we can not sustain the 35 U.S.C. § 103 rejection of
independent claims 3, 6, 9, and 12, nor the rejection of
claims 5, 8, 11, and 14 which depend therefrom. Accordingly,
the decision of the Examine rejecting claims 3, 5, 6, 8, 9,
11, 12, and 14 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 1997-0123
Application 08/368,926
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JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR/pgg
Robert D. Marshall Jr.
Texas Instruments Incorporated
P.O. Box 655474 MS 219
Dallas, TX 75265