13436150 (P.T.A.B. Mar. 15, 2018)

Ex Parte Guo et al

Patent Trial and Appeal BoardMar 15, 2018

13436150 (P.T.A.B. Mar. 15, 2018)

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. 13/436,150 03/30/2012 Fei Guo AMDI:269\HON 1107 16501 7590 Timothy M. Honeycutt Attorney at Law 37713 Parkway Oaks Ln. Magnolia, TX 77355 03/19/2018 EXAMINER PHAN, THIEM D ART UNIT PAPER NUMBER 3729 NOTIFICATION DATE DELIVERY MODE 03/19/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): timhoney @ sprynet.com timhoneycutt @ earthlink.net elizabethahoneycutt @ earthlink.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FEI GUO, FENG ZHU, JULIUS DIN, ANWAR KASHEM, and SALLY YEUNG Appeal 2017-006936 Application 13/436,150 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and FREDERICK C. LANEY, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Fei Guo et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated June 13, 2016, hereinafter “Final Act.”) rejecting claims 1-7 and 26-32.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 Advanced Micro Devices, Inc., and ATI Technologies ULC are identified as the real parties in interest in Appellants’ Appeal Brief (filed Oct. 18, 2016, hereinafter “Appeal Br.”), at page 4. 2 Claims 8-25 are withdrawn. Appeal Br. 6. Appeal 2017-006936 Application 13/436,150 SUMMARY OF DECISION We REVERSE. INVENTION Appellants’ invention relates to “semiconductor processing.” Spec, para. 1. Claims 1 and 26 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method of manufacturing, comprising: forming a resistor onboard an interposer, the interposer adapted to have a first semiconductor chip mounted thereon, the resistor adapted to dampen a capacitive network, the capacitive network having at least one capacitor positioned off the interposer and the semiconductor chip. REJECTIONS I. The Examiner rejected claims 1-7, 26-30, and 32 under 35 U.S.C. § 102(b) as being anticipated by Lee et al. (US 9,064,715 B2; iss. June 23, 2015, hereinafter “Lee”). II. The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as being unpatentable over Lee and Beilin et al. (US 5,854,534; iss. Dec. 29, 1998, hereinafter “Beilin”). ANALYSIS Rejection I The Examiner finds that Lee discloses, inter alia, “forming a resistor . . . onboard an interposer [22].” Final Act. 2 (citing Lee, col. 2,11. 37—41, Fig. 1). 2 Appeal 2017-006936 Application 13/436,150 Appellants argue that Lee fails to disclose “‘forming’ a resistor,” as called for by each of independent claims 1 and 26, because “Lee . . . discloses surface mounting pre-existing resistors on the interposer 22.” Appeal Br. 15 (citing Lee, col. 2,11. 37—41). According to Appellants, “[mpunting is not forming.” Id. In response, the Examiner takes the position that an ordinary and customary meaning of the term “forming” is “creating, making or arranging.” Examiner’s Answer 6 (dated Feb. 8, 2017, hereinafter “Ans.”) (citing http://www.merriam-webster.com/dictionary/form). The Examiner notes that because Appellants’ Specification does not define the phrase “forming a resistor onboard an interposer,” the phrase “can be given a broadest reasonable interpretation.” Id. (citing MPEP § 2111). Thus, according to the Examiner, “the broadly claimed limitation ‘forming a resistor onboard an interposer’ can be reasonably interpreted as ‘arranging, making, providing, having, installing, bonding, mounting or soldering a resistor onboard an interposer’” Id. During examination, “claims . . . are to be given their broadest reasonable interpretation consistent with the [Specification, [ ] and . . . claim language should be read in light of the [Specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (citing In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983)). This means that the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). In this case, we agree with Appellants that an ordinary and customary meaning of the term “forming” is “to give . . . shape to” or to “CONSTRUCT.” Reply Brief 2 (filed Mar. 29, 3 Appeal 2017-006936 Application 13/436,150 2017, hereinafter “Reply Br.”) (citing Merriam-Webster Dictionary online). Such a meaning is consistent with Appellants’ Specification, which describes “fabricating” a resistor onboard an interposer. See e.g., Spec, paras. 32 (“[T]he resistor 27 may be fabricated entirely internally to the interposer 15.”), 38 (“[T]he interposer-based resistor is fabricated onboard the interposer.”) (emphasis added). As such, in light of Appellants’ Specification, a person having ordinary skill in the art of semiconductor processing would interpret the phrase “forming a resistor onboard an interposer” to mean constructing or fabricating a resistor onboard an interposer. Therefore, we agree with Appellants that the same skilled artisan would not reasonably consider “mounting” to mean “forming.” Appeal Br. 16. Furthermore, in addition to ‘ forming a resistor onboard an interposer,” we note that each of independent claims 1 and 26 also requires “a first semiconductor mounted thereon.” Appeal Br. 21, 22 (Claims App.) (emphasis added). Absent of any persuasive evidence to the contrary, the use of these different terms, “forming” and “mounted,” in the claims, connotes different meanings, and, thus, we do not agree with the Examiner that “forming” means “mounting.”3 See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000). Accordingly, the Examiner’s interpretation of independent claims 1 and 26, which relies on the view that Lee’s “mounting” of resistors 26C1, 26C2 onto interposer 22 constitutes the claimed step of “forming a resistor 3 “[T]he claimed language ‘forming a resistor onboard an interposer’ can be viewed as ‘arranging or mounting a resistor onboard an interposer[,]’ which is taught by Lee[].” Ans. 6 (emphasis added). 4 Appeal 2017-006936 Application 13/436,150 onboard an interposer” is unreasonably broad in light of Appellants’ Specification and in view of the plain and ordinary meaning of the term “forming.” Therefore, as Lee discloses “surface mountable components,” i.e. resistors, Lee fails to disclose “forming a resistor onboard an interposer,” as called for by each of independent claims 1 and 26. As such, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 102(b) of independent claims 1 and 26, and their respective dependent claims 2-7, 27-30, and 32, as anticipated by Lee. Rejection II The Examiner’s use of the Beilin disclosure does not remedy the deficiency of Lee discussed supra. See Final Act. 3-4. Therefore, for the same reasons as discussed above, we also do not sustain the rejection under 35 U.S.C. § 103(a) of claim 31 as unpatentable over Lee and Beilin. SUMMARY The Examiner’s decision to reject claims 1-7 and 26-32 is reversed. REVERSED 5