Ex parte Fogal

Board of Patent Appeals and Interferences

May 16, 2000

08721505 (B.P.A.I. May. 16, 2000)

Application for patent filed September 26, 1996. This application is a reissue application of Serial1
Number 08/059,971, filed May 07, 1993, and issued, as US Patent 5,350,106 on September 27, 1994.
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publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICH FOGAL
____________
Appeal No. 2000-0949
Application No. 08/721,5051
____________
ON BRIEF
____________
Before BARRETT, FLEMING, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 5-8, 14, 15
and 20-26, which are all of the claims pending in this application.
We reverse and institute a rejection under 37 CFR 1.196(b).
Appeal No. 2000-0949
Application No. 08/721,505
2
BACKGROUND
The appellant's invention relates to a semiconductor wire bonding method. An
understanding of the invention can be derived from a reading of exemplary claim
14, which is reproduced below.
14. A semiconductor device wire bonding method, comprising:
providing a semiconductor die having a plurality of bond pads thereon connected to
integrated circuits formed on the die;
providing a semiconductor leadframe strip having a plurality of die mounting sites,
each mounting site having an associated arrangement of lead fingers
including tip portions;
attaching the die to the leadframe strip at a mounting site;
bonding a fine bond wire to a bond pad of the die;
determining a width (W) and a longitudinal axis of the tip portion of a selected lead
finger;
locating a bond site on the tip portion of the selected lead finger generally along the
longitudinal axis and spaced from a terminal edge of the selected lead finger
by a predetermined distance; and
bonding the fine bond wire to the selected lead finger substantially at the bond site.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Holdgrafer 5,119,436 Jun. 02, 1992
Rostoker et al. (Rostoker) 5,404,047 Apr. 04, 1995
(Filed Dec. 18, 1992)
Appeal No. 2000-0949
Application No. 08/721,505
We also make the following observations: (1) Appellant has apparently deleted an additional line2
in the amendment of column 1 wherein line 31 should remain in the text. (2) In column 3, line 10 "leadfree"
should be corrected to "leadframe."
3
Claims 5 and 14 stand rejected under 35 U.S.C. § 102 as being unpatentable over
Holdgrafer. Claims 6-8, 15 and 20-26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Holdgrafer in view of Rostoker.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 16, mailed Sep. 10, 1999) for the examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 15, filed Jun. 22, 1999) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.2
35 U.S.C. § 102
The examiner maintains that the "descriptions [in Holdgrafer] set forth the same
meaning as is in the instant claim of determining a location of a longitudinal axis of the tip
portion of the lead finger; locating the bond site on the lead finger along the longitudinal
Appeal No. 2000-0949
Application No. 08/721,505
4
axis and spaced by a predetermined distance from the terminal edge." (See answer at
page 3.) Appellant argues that Holdgrafer does not teach the step of "determining a width
(W)" and a "longitudinal axis of the tip portion of a selected lead finger" as recited in claim
14 and claim 5. (See brief at pages 7-8.) Appellant identifies the language in Holdgrafer
which the examiner cites generally and concludes that "Holdgrafer does not actually
determine the longitudinal axis of a lead finger." (See brief at page 8.) From our review
of Holdgrafer, we are not certain whether Holdgrafer determines the longitudinal axis.
While we do not necessarily agree with appellant that Holdgrafer does not determine the
longitudinal axis, we disagree with the examiner that the language of Holdgrafer means the
same thing as the claim limitation.
"To establish inherency, the extrinsic evidence 'must make clear that the missing
descriptive matter is necessarily present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.'" In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
"Inherency, however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not sufficient."
Appeal No. 2000-0949
Application No. 08/721,505
5
Roberston, 169 F.3d at 745, 49 USPQ2d at 1950-51 citing Continental Can, 948 F.2d
at 1269, 20 USPQ2d at 1749. Therefore, the examiner has not set forth a prima facie
case of anticipation and we will not sustain the rejection of independent claims 5 and 14.
35 U.S.C. § 103
The examiner additionally applies Rostoker in combination with Holdgrafer.
Rostoker is relied upon by the examiner to teach and suggest the modification of the
predetermined distance D from the terminal edge of the lead finger as taught in Holdgrafer
to be a distance in between the upper limit D taught by Holdgrafer and the lower limit or
safety zone and taught by Rostoker. The examiner does not rely upon the teaching of
Rostoker to teach or suggest the determination of the longitudinal axis, nor has the
examiner maintained that this determination would have been obvious in view of either
teaching. Since Rostoker does not remedy the deficiency as discussed in the rejection
under 35 U.S.C. § 102, we will not sustain the examiner’s rejection of claims 6-8, 15 and
20-26. Independent claims 21, 23, 24, 25 and 26 contain the same limitation that the
longitudinal axis is determined.
Appeal No. 2000-0949
Application No. 08/721,505
We have only applied the prior art to claim 14 for the sake of brevity and to address the aspect of3
"determining the longitudinal axis." We leave the remainder of the claims for the examiner to evaluate and
make determinations thereto.
6
CONCLUSION
To summarize, the decision of the examiner to reject claims 5 and 14 under
35 U.S.C. § 102 is reversed and the decision of the examiner to reject claims
6-8, 15 and 20-26 under 35 U.S.C. § 103 is reversed.
37 CFR 1.196(b)
While we do not agree with the examiner with respect to the rejection under
35 U.S.C. § 102, in our view, claim 14 would have been obvious to one of ordinary skill in
the art at the time the invention was made over the combination of Holdgrafer in view of the
admitted prior art at column 1, lines 58-68 and column 2, lines 16-29 of the specification
as filed in the reissue application.3
Holdgrafer teaches the following limitations of claim 14:
Limitations of Claim 14 Teachings in Holdgrafer
A semiconductor device wire bonding Holdgrafer teaches the use of the pattern
method recognition in a wire bonding system.
providing a semiconductor die having a Holdgrafer teaches the use of the vision
plurality of bond pads thereon connected system for use with dies with plural bond
to integrated circuits formed on the die; pads as shown in figures 1-3.
Appeal No. 2000-0949
Application No. 08/721,505
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providing a semiconductor leadframe strip Holdgrafer teaches the use of the vision
having a plurality of die mounting sites, system for use with dies with a leadframe
each mounting site having an associated strip with associated lead fingers having
arrangement of lead fingers including tip tip portions as shown in figures 1-3.
portions;
attaching the die to the leadframe strip at a Inherent in the production of the chip would
mounting site; have been the connection of the die to the
substrate bearing the leadframe strip.
Alternatively, it would have been obvious to
one of ordinary skill in the art to have
connected the two bodies together prior to
performing wire bonding.
bonding a fine bond wire to a bond pad of Since the vision system of Holdgrafer is
the die; intended to be associated with a wire
bonding apparatus, the wire bonding
apparatus would bond the wire to the die.
(See col. 7, lines 19-32)
determining a width (W) and a longitudinal Holdgrafer discloses the use of
axis of the tip portion of a selected lead determining the width of the lead finger
finger; and dividing this width by 2 to determine
the center. (See col.5, lines 29- col. 6,
lines 22.) Holdgrafer does not specifically
disclose the determination of the
longitudinal axis. In our view, it would have
been obvious to a skilled artisan to have
the vision system similarly determine the
longitudinal axis and use it for tracking the
bonding tool. As evidence to support this
position, we rely upon appellant’s own
discussion in the “Background of the
Invention” section.
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Application No. 08/721,505
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locating a bond site on the tip portion of Holdgrafer discloses the bonding point to
the selected lead finger generally along the be a predetermined distance from the
longitudinal axis and spaced from a edge, 25 or tip. (See col. 5 lines 54-58
terminal edge of the selected lead finger and figure 3.)
by a predetermined distance; and
bonding the fine bond wire to the selected Since the vision system of Holdgrafer is
lead finger substantially at the bond site. intended to be associate with a wire
bonding apparatus, the wire bonding
apparatus would bond the wire to the lead
finger. (See col. 7, lines 19-32).
Appellant’s specification discloses that determining and using the longitudinal axis of the
lead finger in wire bonding was well known. In the "Background of the Invention" section,
Appellant states:
In general, such vision systems are adapted to sense the lateral
edges of the lead fingers and to teach a bond site in the middle of the lead
finger somewhere along the longitudinal axis of the lead finger. There is,
however, no provision for precisely locating the bond site on a lead finger an
exact distance from the tip of the lead finger. Typically, the bonding tool is
programmed by an operator to move a set distance away from the bond pad
for placing the bond site along the longitudinal axis of a lead finger. This is
not an accurate or consistent method for teaching a bond site location on a
lead finger. In addition, this method of locating a bond site tends to use more
bond wire than is necessary because the length of the bond wire is
consistently oversized.
(Emphasis added.) (See column 1, line 58- col. 2, line 3.)
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Application No. 08/721,505
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Appellant further states:
For teaching the location of a bond site 20' on a particular lead finger
16', the locations of the lateral edges 22', 24' of the lead finger 16' are
sensed by the vision system of the wire bonding apparatus. The wire
bonding apparatus is then programmed to determine a midpoint between
the edges 22, 24 of the lead finger 16'. This is the dimension "Y" in FIG. 1.
Accordingly, axis 28' is the longitudinal axis of the lead finger 16'. Following
this determination, the bonding tool of the wire bonding apparatus is
programmed to move along the longitudinal axis 28' of the lead finger 16', a
predetermined distance "X" from the appropriate bond pad 18 on the
semiconductor die 10, to locate the bond site 20' and make the bond.
(Emphasis added.) (See column 2, lines 16-29.)
For the tool to move along the longitudinal axis, the axis must have been
determined by the vision system and communicated to the tool. In our view, it would have
been obvious to one of ordinary skill in the art at the time of the invention to have
incorporated the determination and the use of the longitudinal axis of lead fingers into the
tracking system of Holdgrafer to move the predetermined distance D to attach the wire
bond.
We make no finding with respect to the determination of the bonding distance which
is not PRE-determined since this limitation is not in the broadest claims, in our view, which
are claims 5 and 14. In our view, the choice of a predetermined value is a value which may
be chosen by a skilled artisan though routine experimentation whereas a measured and
determined value based upon a measurement or calculation
Appeal No. 2000-0949
Application No. 08/721,505
10
which is variable and not the same as the predetermined or set value. Holdgrafer clearly
teaches the use of a set predetermined value which is not based upon a measured value.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b) (amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that "[a] new ground of rejection shall not be considered final
for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of proceedings (37 CFR §
1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application will
be remanded to the examiner . . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record . . . .
Appeal No. 2000-0949
Application No. 08/721,505
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No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
REVERSED - 37 CFR § 1.196(b)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JLD:hh
Appeal No. 2000-0949
Application No. 08/721,505
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JOSEPH A. WALKOWSKI
TRASK BRITT & ROSSA
P O BOX 2550
SALT LAKE CITY, UT 84110-2550