Ex Parte Derderian

Board of Patent Appeals and Interferences

Feb 27, 2007

10230452 (B.P.A.I. Feb. 27, 2007)

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for publication and is not binding precedent of the Board.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 JAMES M. DERDERIAN
____________

Appeal 2007-0068
Application 10/230,452
____________

ON BRIEF
____________

Before BLANKENSHIP, SAADAT, and MACDONALD, Administrative
Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-22, which are all of the claims
pending in this application.
We affirm.
Appeal No. 2007-0068
Application No. 10/230,452

INTRODUCTION
Appellant’s invention relates to a multi-chip module in which two or
more semiconductor devices are vertically stacked such that the distance
between the adjacent devices is determined, at least in part, by the heights of
the discrete conductive elements such as bond wires that protrude above an
active surface of the lower device. Claim 1 is illustrative:
1. A semiconductor device assembly, comprising:

a first semiconductor device;

discrete conductive elements extending over portions of an active
surface of the first semiconductor device; and

a second semiconductor device positioned at least partially over the
first semiconductor device and resting upon the discrete conductive elements
in electrical isolation therefrom.

The Examiner relies on the following prior art references to show
unpatentability:
Lee et al. (Lee) US 6,388,313 May 14, 2002
(filed Jan. 30, 2001)
Wu et al. (Wu) US 6,400,007 Jun. 4, 2002
(filed Apr. 16, 2001)
Shim et al. (Shim) US 6,531,784 Mar. 11, 2003
(filed Jun. 2, 2000)
Kondo et al. (Kondo) US 6,545,365 Apr. 8, 2003
(filed Feb. 13, 2001)

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Application No. 10/230,452

The rejections as presented by the Examiner are as follows:
1. Claims 1-4, 9, 10, 13-15, 18, 19, 21, and 22 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Wu.
2. Claims 1, 7, 8, 12, 13, 17, and 20 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Shim.
3. Claims 5, 6, and 16 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Wu and Lee.
4. Claim 11 stands rejected under 35 U.S.C § 103(a) as unpatentable
over Wu and Kondo.
Rather than reiterate the opposing arguments, we refer to the Briefs
and the Answer for the respective positions of Appellant and the
Examiner.
OPINION
35 U.S.C. § 102(e) rejection of claims over Wu
The focus of Appellant’s arguments is that Wu does not describe or
show the second semiconductor device resting upon, or its back contacting
wires 32 (Br. 9-10). The Examiner argues that Wu shows the semiconductor
device 34, which rest on portions of overflow glue 50 positioned on the
upper surface of the first device, in contact with discrete elements 32
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Appeal No. 2007-0068
Application No. 10/230,452

(Answer 8-9). The Examiner further asserts that the claims recite that the
second device rests upon at least some of the discrete conductive elements
and therefore, do not require the bond wires to be the sole element
supporting the upper device (Answer 9).
We agree with the Examiner that claims 1 and 13 merely require that
the upper device be resting, among other things, upon the discrete elements.
The claims, although reciting that the upper device rests upon the discrete
conductive elements, do not preclude support by other elements in addition
to the conductive elements. In that regard, Wu does disclose in Figure 4 that
the plurality of wires 32 are located above overflow glue 50 and together
support upper chip 34 (col. 3, lines 36-40). Similarly, Figure 3 of Wu shows
in detail all the elements over the lower chip that would support the upper
chip, such as bond wires 32 and overflow glue 50 which form the dam-shape
bumps at the upper edges of chip 28 (col. 3, lines 18-24).
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir.
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Application No. 10/230,452

1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). The inquiry as to whether a reference anticipates a claim must
focus on what subject matter is encompassed by the claim and what subject
matter is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), it is only necessary for the claims to “‘read on’ something disclosed
in the prior art reference, i.e., all limitations of the claim are found in the
reference, or ‘fully met’ by it.” See also Atlas Powder Co. v. IRECO Inc.,
190 F.3d at 1346, 51 USPQ2d at 1945 (Fed. Cir. 1999) (quoting Titanium
Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773, 778 (Fed. Cir.
1985)).
As pointed out by the Examiner (Answer 11), since the wires are in
contact with the upper semiconductor chip, the upper chip actually rests
upon the wires. Similarly, we remain unconvinced by Appellant’s argument
that Figure 4 of Wu lacks sufficient detail related to the elements positioned
between the upper chip and the lower chip and fails to show the claimed
structure. We find depicted in Figure 3, in sufficient details, all the elements
over the lower chip that would support the upper chip, such as bond wires 32
and overflow glue 50 which form the dam-shape bumps at the upper edges
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Appeal No. 2007-0068
Application No. 10/230,452

of chip 28 (col. 3, lines 18-24). As the upper device rests upon the discrete
conductive elements, Wu does disclose the claimed arrangement of the
second chip in relation with the discrete conductive elements and therefore,
anticipates claims 1 and 13, as well as dependent claims 2-4, 9, 10, 14, 15,
18, 19, 21, and 22.
35 U.S.C. § 102(e) rejection of claims over Shim
Appellant argues that Shim does not anticipate the claims since it
shows upper device 16 resting upon adhesive 44 or spacer strip 50C instead
of upon the bond wires (Br. 11). The Examiner points out that the adhesive
or the spacer strips are attached to and a part of the upper die, which together
rest upon the bond wires 38B (Answer 11).
We again agree with the Examiner that the strips are a part of the
upper device since they are attached to the bottom surface of the upper die.
We also find that the arrangement disclosed in Shim is consistent with the
Appellant’s disclosure and claims, which require the second device rest upon
the discrete conductive elements in electrical isolation therefrom keeping
the discrete conductive elements of the first semiconductor die from short
circuiting with other elements.
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Appeal No. 2007-0068
Application No. 10/230,452

In view of our analysis and the discussion made above with respect to
the teachings of the reference, we find that Shim teaches all the recited
elements and therefore, anticipates the rejected claims. Accordingly, the
35 U.S.C. § 102(e) rejection of claims 1, 7, 8, 12, 13, 17, and 20 as
anticipated by Shim is sustained.
35 U.S.C. § 103(a) rejection of claims over Wu and Lee
Appellant argues that Wu and Lee lack proper motivation for
combining (Br. 13) and repeats the same arguments made above with respect
to anticipation of claim 1 (Br. 14). We again agree with the Examiner
(Answer 12) that Lee provides proper suggestion for isolating the discrete
conductive elements by wrapping them in an encapsulating adhesive which
isolates them from the semiconductor devices and the other conductive
elements (Lee, Abstract; col. 3, ll. 36-42). We also find ourselves persuaded
by the Examiner’s position (Answer 13) that coating the wires ensures
electrical isolation of the wires and actually helps the upper semiconductor
device to successfully be placed upon the bond wires. Therefore, we sustain
the 35 U.S.C. § 103 rejection of claims 5, 6, and 16 over Wu and Lee.

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Appeal No. 2007-0068
Application No. 10/230,452

35 U.S.C. § 103(a) rejection of claim 11 over Wu and Kondo
Turning now to the rejection of claim 11, we find that Appellant
merely points out that the claim should be allowed because of its
dependency upon base claim 1 (Br. 14). As we discussed the teachings of
Wu with respect to claim 1, supra., we also find that the Examiner has made
a reasonable case of prima facie obviousness with respect to the combination
of Wu and Kondo. Therefore, we sustain the 35 U.S.C. § 103(a) rejection of
claim 11 over Wu and Kondo.
CONCLUSION
In view of the foregoing, the decision of the Examiner rejecting
claims 1-4, 7-10, 12-15, and 17-22 under 35 U.S.C. § 102 and rejecting
claims 5, 6, 11, and 16 under 35 U.S.C. § 103 is affirmed.

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Appeal No. 2007-0068
Application No. 10/230,452

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

MDS/rwk

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Appeal No. 2007-0068
Application No. 10/230,452

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