Ex Parte Ho et alDownload PDFPatent Trial and Appeal BoardMar 12, 201411301713 (P.T.A.B. Mar. 12, 2014) Copy Citation 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. 11/301,713 12/13/2005 Lee Sang Ho ITL.1323US (P22705) 1842 21906 7590 03/13/2014 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER HAN, JONATHAN ART UNIT PAPER NUMBER 2818 MAIL DATE DELIVERY MODE 03/13/2014 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte LEE SANG HO, NELSON PUNZALAN, and CHEE KEY CHUNG __________ Appeal 2012-000360 Application 11/301,713 Technology Center 2800 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000360 Application 11/301,713 2 A. STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 13-25. Claims 1-12 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to the Appellants, the claims on appeal “cover the situation where one package includes a radio frequency die and a non-radio frequency die and includes connections that are different for the radio frequency and non-radio frequency dice.” App. Br. 10.1 Independent claims 13 and 21 are reproduced below from the Claims Appendix of the Appeal Brief. The limitations at issue are italicized. 13. An electronic device comprising: a first radio frequency integrated circuit die; a second non-radio frequency integrated circuit die; a package surrounding said dice; lands for electrical connections to the said first radio frequency die; and leads coupled to said second non-radio frequency die. 21. An electronic device comprising: a first integrated circuit die; a second integrated circuit die stacked on top of said first integrated circuit die; quad flat no-lead connections to said first integrated circuit die; and 1 Appeal Brief dated February 22, 2011. Appeal 2012-000360 Application 11/301,713 3 thin small outline package connections to said second integrated circuit die. The claims stand rejected as follows: (1) claims 21 and 23 under 35 U.S.C. § 102(b) as anticipated by Chye;2 (2) claims 13-16, 19, 21-23, and 25 under 35 U.S.C. § 103(a) as unpatentable over Choi3 in view of Chye; (3) claims 17, 18, and 24 under 35 U.S.C. § 103(a) as unpatentable over Choi in view of Chye and further in view of Butler;4 and (4) claim 20 under 35 U.S.C. § 103(a) as unpatentable over Choi in view of Chye and further in view of Takiar.5 B. DISCUSSION 1. Rejection (1)6 The Examiner finds: Chye discloses an electronic device (see Figure 11, upside down) comprising: a first integrated circuit die [120]; a second integrated circuit die [140] stacked on top of said first integrated circuit die (see Figure 11), and quad flat no-lead connections [124] to said first integrated circuit die [120] (see Figure 11) [and] thin small outline package [144] connections to said second integrated circuit die [140] (see ¶[[0041]). 2 US 2004/0100772 A1, published May 27, 2004. 3 US 6,724,090 B2, issued April 20, 2004. 4 US 6,392,304 B1, issued May 21, 2002. 5 US 5,422,435, issued June 6, 1995. 6 The Appellants argue the patentability of claims 21 and 23 as a group. See App. Br. 11. Therefore, for purposes of this appeal, claim 23 stands or falls with the patentability of claim 21. Appeal 2012-000360 Application 11/301,713 4 Non-Final 3 (emphasis added);7 Ans. 4 (emphasis added).8 The Appellants generally argue that “Chye shows using different chips in multiple figures, but always teaches using the same type of connections.” App. Br. 10, 11. However, the Appellants do not specifically address Chye Figure 11 and do not explain, in any detail, why the Examiner’s factual findings as to Chye Figure 11 are erroneous. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (after the examiner presents a prima facie case of unpatentability, the burden of coming forward with evidence or argument shifts to the applicant). For the first time on appeal, the Appellants also argue in the Reply Brief that: [The Examiner’s] argument is based on an erroneous position that two dice connected to the same lead frame are connected differently. This position is an impossibility since both alleged “connections” use one, and only one, existing connection in the form of a lead 148. The argument that the contacts 124 are leads is baseless and is inconsistent with the reference itself. See Chye at column 11, line 38.[9] Reply Br. 1.10 Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474- 77 (BPAI 2010) (informative). The Appellants have not provided such a showing 7 Non-Final Office Action dated September 13, 2010. 8 Examiner’s Answer dated May 11, 2011. 9 Column 11, line 38 of Chye does not discuss reference numerals 124 or 148. 10 Reply Brief dated June 23, 2011. Appeal 2012-000360 Application 11/301,713 5 on this record. Therefore, the Appellants’ argument will not be considered on appeal.11 For the reasons set forth above, the § 102(b) rejection is sustained. 2. Rejection (2)12 The Examiner finds Choi discloses an electronic device comprising a first radio frequency integrated circuit die, a second non-radio frequency integrated circuit die, and a package surrounding the dice. The Examiner finds Choi does not disclose the lands and leads recited in claim 13. Non-Final 4; Ans. 5. Nonetheless, the Examiner finds: Chye discloses leads [148] coupled to said second non-radio frequency die [140] (see Figure 11 upside down, and Column 7, lines 45-56) and furthermore discloses lands [124] for electrical connection for chip [120] and leads [148] for electrical connection of a second chip used together in a single device (see Figure 11, Column 11, lines 43-53). Non-Final 4; Ans. 5. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Choi’s device with the coupling structure disclosed in Chye. Non-Final 4; Ans. 5, 10-11. The Appellants argue Choi discloses both radio frequency and non-radio frequency chips in the same package but uses the same type of connections for both chips. Thus, the Appellants argue Choi teaches away from the claimed invention. App. Br. 10. 11 We note that the Appellants’ argument does not explain, in any detail, why claim 21 does not read on the embodiment illustrated in Chye Figure 11. See Ans. 11. 12 The Appellants argue the patentability of the claims subject to rejection (2) as a group. See App. Br. 10-11. Therefore, for purposes of this appeal, claims 14-16, 19, 21-23, and 25 stand or fall with the patentability of claim 13. Appeal 2012-000360 Application 11/301,713 6 The Appellants’ argument is not persuasive of reversible error. Choi does not criticize, discredit, or otherwise discourage the coupling structure disclosed in Chye Figure 11. Thus, the mere disclosure in Choi of an alternative coupling structure does not constitute a teaching away from the embodiment illustrated in Chye Figure 11. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Appellants also argue “Chye shows using different chips in multiple figures, but always teaches using the same type of connections.” App. Br. 10. For the reasons set forth in the section entitled “Rejection (1),” supra, the Appellants’ arguments with respect to Chye are not persuasive of reversible error.13 Based on the foregoing, the § 103(a) rejection of claims 13-16, 19, 21-23, and 25 is sustained. 3. Rejections (3) and (4) The Appellants do not present substantively distinct arguments is support of the patentability of claims 17, 18, and 24 in rejection (3) or claim 20 in rejection (4). See App. Br. 11. Therefore, the § 103(a) rejections of claims 17, 18, 20, and 24 are sustained for the reasons set forth in the section entitled “Rejection (2),” supra. C. DECISION The decision of the Examiner is affirmed. 13 With respect to the Appellants’ new argument in the Reply Brief, we note that the Appellants have likewise failed to explain, in any detail, why claim 13 does not read on the embodiment illustrated in Chye Figure 11. See Ans. 11. Appeal 2012-000360 Application 11/301,713 7 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). AFFIRMED lp Copy with citationCopy as parenthetical citation