Ex Parte EGAWA

Board of Patent Appeals and Interferences

Feb 17, 2011

11276828 (B.P.A.I. Feb. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/276,828 03/15/2006 Yoshimi EGAWA OKI 497 3824
23995 7590 02/18/2011
RABIN & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
EXAMINER
WAGNER, JENNY L
ART UNIT PAPER NUMBER
2891
MAIL DATE DELIVERY MODE
02/18/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YOSHIMI EGAWA
____________________

Appeal 2009-013397
Application 11/276,828
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
MARC S. HOFF, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013397
Application 11/276,828

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:
Claim 1: A method for manufacturing a semiconductor device,
comprising the steps of:
preparing a wafer including a first circuit formation region and a first
surrounding region formed to surround said first circuit formation region;
laminating a first chip on said first circuit formation region, said first
chip having a plane dimension that is substantially the same as a plane
dimension of said first circuit formation region;
pouring a first underfill into a first space between said first circuit
formation region and said first chip from said first surrounding region, the
first underfill having a first viscosity;
hardening said first underfill;
forming a laminated structure comprised of a first chip block that
includes a second chip including said first circuit formation region, said first
chip, and said first underfill by conducting dicing with respect to said wafer;
laminating said laminated structure on a substrate;
pouring a second underfill into a second space between said laminated
structure and said substrate, the second underfill having a second viscosity
higher than that of said first underfill; and
hardening said second underfill.
Rejections
1. The Examiner rejected claims 1 and 3 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Egawa (US 2002/0119599
Appeal 2009-013397
Application 11/276,828

3
A1), Ohuchi (US 6,841,420 B2), Yaginuma (US 5,445,873), and Moden
(US 5,960,258).
2. The Examiner rejected claim 5 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Egawa (US 2004/0000723 A1),
Ohuchi, Yaginuma, and Moden.
3. The Examiner rejected claims 2 and 4 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Egawa (US 2002/0119599
A1), Ohuchi, Yaginuma, Moden, and Egawa (US 6,229,215 B1).
4. The Examiner rejected claim 6 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Egawa (US 2004/0000723 A1),
Ohuchi, Yaginuma, Moden, and Egawa (US 6,229,215 B1).
Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claims 1-6
under 35 U.S.C. § 103(a) for numerous reasons including: (1) the
combinations of references fail to disclose the method steps of pouring first
and second underfills, where the second underfill has a higher viscosity than
the first underfill; (2) Yaginuma teaches a resin or a high viscosity oil, not a
high viscosity resin; and (3) Yaginuma teaches away from using a high
viscosity resin coating composition because column 2, lines 18-23, states
that it is desirable to provide a coating without diluting with solvents (i.e.,
avoiding solvent dilution). Reply Br. 2.
Issue on Appeal
Did the Examiner err in rejecting claims 1-6 as being obvious because
Yaginuma fails to teach or suggest the high viscosity underfill limitation at
issue?

Appeal 2009-013397
Application 11/276,828

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief and Reply Brief that the Examiner has erred.
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner.
Each of independent claims 1, 3, and 5 recites a method for
manufacturing a semiconductor device including (i) pouring a first underfill
having a first viscosity, and (ii) pouring a second underfill having a second
viscosity higher than that of the first underfill.
Moden teaches a first underfill 117 (Figs. 6A, 6B) that is low in
viscosity (see col. 9, ll. 31-35). Yaginuma teaches and suggests (see col. 1,
ll. 20-27) covering circuit boards or electronic elements with “coating
compositions based on a resin or high viscosity oil . . . (see Ans. 5, 12). The
Examiner is correct that Yaginuma thus teaches or suggests a high viscosity
substance as a coating composition (see Ans. 12). Appellant’s second
contention supra, that Yaginuma fails to teach a resin or a high viscosity oil,
not a high viscosity resin, is unpersuasive inasmuch as claims 1-6 do not
recite a “resin” and this argument is not commensurate in scope with the
language of the claims on appeal.
Appellant has not shown the Examiner erred in determining that
Yaginuma teaches or suggests pouring a high viscosity substance, layer, or
coating for the purpose of sealing a chip package and protecting the package
from sever ambient environments. Likewise, Appellant has not shown the
Appeal 2009-013397
Application 11/276,828

5
Examiner erred in determining Yaginuma’s substance or layer teaches or
suggests an underfill with a viscosity higher than that of the first underfill
taught by Moden, and that one of ordinary skill in the art at the time of
Appellant’s invention would be motivated to combine these teachings to
prevent the flow of underfill material beyond a die perimeter (Moden, col. 9,
ll. 31-35) and to provide protection from severe ambient conditions (see
Yaginuma, col. 1, ll. 20-27). Accordingly, Appellant’s first contention
supra, that the combinations of references fail to disclose the method steps
of pouring first and second underfills, where the second underfill has a
higher viscosity than the first underfill, is unpersuasive.
Appellant’s third contention supra, that Yaginuma teaches away from
using a high viscosity resin coating composition because column 2, lines 18-
23, states that it is desirable to avoid solvent dilution is also unconvincing.
To the contrary, while column 2, lines 18-23, of Yaginuma describes
avoiding adding a solvent to a resin, this will raise and not lower the
viscosity. Therefore, Yaginuma teaches and suggests not using solvents and
providing a high viscosity composition.

CONCLUSIONS
(1) The Examiner has not erred in determining that Yaginuma teaches
or suggests pouring a high viscosity underfill, as set forth in claims 1-6.
(2) The Examiner has not erred in rejecting claims 1-6 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-6 are not patentable.

Appeal 2009-013397
Application 11/276,828

6
DECISION
The Examiner’s rejections of claims 1-6 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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RABIN & BERDO, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005