Ex Parte GOH

Board of Patent Appeals and Interferences

Jul 2, 2003

08863848 (B.P.A.I. Jul. 2, 2003)

1
The opinion in support of the decision being entered today was
not written for and is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JING S. GOH
__________
Appeal No. 2003-0249
Application 08/863,848
___________
HEARD: June 11, 2003
___________
Before FLEMING, DIXON, and SAADAT, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 8, all the claims pending in the instant
application.
Invention
The invention relates to packaging semiconductor devices,
and more particularly to packaging board on chip devices. Figure
1 illustrates that solder balls 100 are connected to the
Appeal No. 2003-0249
Application 08/863,848
2
semiconductor die 114 by wires 118. The wires 118 extend from
semiconductor die 114 through a hole 120 of the printed circuit
board. The hole through the printed circuit board 122 may be
positioned at the central longitudinal axis of the printed
circuit board.
The independent claim 1 present in the application is
reproduced as follows:
1. A package for an integrated circuit having wires for
electrical connection, comprising:
a circuit board for mounting the integrated circuit having a
first surface and a second surface;
a connector device positioned on the first surface of the
circuit board for electrically connecting the integrated circuit
by said wires;
said integrated circuit being positioned on the second
surface of said circuit board; and
said wires being centrally positioned on said integrated
circuit to abut said first surface of the circuit board.
References
The references relied on by the Examiner are as follows:
King et al. (King) 5,677,566 Oct. 14, 1997
(filed May 8, 1995)
Kata et al. (Kata) 5,683,942 Nov. 4, 1997
(filed May 25, 1995)
Nakamura et al. (Nakamura) 5,777,391 Jul. 7, 1998
(filed Dec. 11, 1995)
Appeal No. 2003-0249
Application 08/863,848
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Rejections at Issue
Claims 1, 2 and 5 through 7 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Nakamura. Claims 3 and 4 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Nakamura and Kata. Claim 8 stands rejected under 35 U.S.C. § 103
as being unpatentable over Nakamura and King.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of Appellant
and Examiner, for the reasons stated infra, we reverse the
Examiner’s rejection of claims 1, 2 and 5 through 7 under
35 U.S.C. § 102, and we reverse the Examiner’s rejection of
claims 3, 4 and 8 under 35 U.S.C. § 103.
We first will address the rejection of claims 1, 2, and 5
through 7 under 35 U.S.C. § 102. Anticipation can be found only
if the prior art reference discloses every element of the claim.
See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir.
1986) and Lindemann Maschinenfabrik GMBH v. America Hoist &
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir.
1984).
Appeal No. 2003-0249
Application 08/863,848
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Appellant argues that the claimed invention requires a wire
centrally positioned on the integrated surface. Appellant argues
that this limitation is not disclosed or suggested by Nakamura.
See page 4 of Appellant’s brief.
As pointed out by our reviewing court, we must first
determine the scope of the claim. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998).
We note that Appellant’s only independent claim 1 recites
“said wires being centrally positioned on said integrated circuit
to abut said first surface of the circuit board.” We further
note that on page 5 of the Appellant’s specification, Appellant
states that the hole through the printed circuit board 122 may be
positioned at the central longitudinal axis of the printed
circuit board. Appellant also shows and discloses that wires 118
are placed through hole 120. See figures 1 and 2 as well as page
5 of Appellant’s specification. We fail to find that the
Appellant has provided a special definition for the claimed term
“centrally”.
As our reviewing court states, “[T]he terms used in the
claims bear a ‘heavy presumption’ that they mean what they say
and have the ordinary meaning that would be attributed to those
Appeal No. 2003-0249
Application 08/863,848
1 Webster’s New World Dictionary, Third Edition, copyright
1998. A copy of the appropriate page is provided.
5
words by persons skilled in the relevant art.” Tex. Digital
Sys., Inc. v. Telegenix, Inc, 308 F.3 1193, 1201-02, 64 USPQ2d
1812, 1817 (Fed. Cir. 2002) cert. denied, 155 L. Ed. 2d 1108,
2003 U.S. Lexis 3734 (2003).
Turning to Webster’s New World Dictionary1, we find that the
ordinary meaning of the term “centrally” is “in, at, or near the
center.”
Turning to the specification, we note that Appellant
discloses wires 118 extending along the longitudinal axis of the
printed circuit board. We note that the wires toward the ends of
the axis certainly could not be considered centrally positioned
as claimed. However, we note that the Appellant’s independent
claim 1 uses the term “comprising” so that the claim is only
directed to those wires shown in figure 2 that could be
considered centrally positioned and not necessarily all the wires
along the central longitudinal axis.
Turning to Nakamura, we find that Nakamura discloses wires 6
attaching to the edge of the integrated circuit 2. See figure 2
and figure 4. Nakamura does not teach “wires being centrally
Appeal No. 2003-0249
Application 08/863,848
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positioned on said integrated circuit” as recited in Appellant’s
claim 1. We note that claims 2 and 5 through 7 depend on claim 1
and thereby also recite this limitation through their dependency.
Therefore, we will not sustain the Examiner’s rejection of claims
1, 2 and 5 through 7 under 35 U.S.C. § 102.
Now we turn to the rejections under 35 U.S.C. § 103. We
note that the Examiner relies on Nakamura for the teaching of the
limitation of having “wires being centrally positioned on said
integrated circuit” for both of the rejections under 35 U.S.C.
§ 103. Therefore, we will not sustain these rejections for the
same reasons as stated above.
Appeal No. 2003-0249
Application 08/863,848
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In view of the foregoing, we have not sustained the
Examiner’s rejection of claims 1, 2 and 5 through 7 under
35 U.S.C. § 102. Furthermore, we have not sustained the
Examiner’s rejection of claims 3, 4 and 8 under 35 U.S.C. § 103.
REVERSED

MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID SAADAT )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2003-0249
Application 08/863,848
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Texas Instruments Incorporated
P.O. Box 655474, M/S 3999
Dallas, TX 95266