Ex Parte HU et al

Patent Trial and Appeal Board

Jun 30, 2016

13030470 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/030,470 02/18/2011 Kevin (Kunzhong) HU
49579 7590 07/01/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2875.5330001 2778
EXAMINER
WRIGHT, TUCKERJ
ART UNIT PAPER NUMBER
2891
MAILDATE DELIVERY MODE
07/01/2016 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 KEVIN (KUNZHONG) HU and
EDWARDLAW 1
Appeal2014-006733
Application 13/030,470
Technology Center 2800
Before JASON V. MORGAN, JOHN A. EV ANS, and
MATTHEW J. McNEILL, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8 and 18-29. Claims 9-17 are canceled. App. Br. 16.
An Oral Hearing was held June 21, 2016. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Broadcom Corporation as the real party in interest.
App. Br. 5.
Appeal2014-006733
Application 13/030,470
Invention
Appellants disclose an integrated circuit (IC) device that includes an
IC die, a laminate coupled to a carrier and a surface of the IC die, and a trace
located on a surface of the laminate.
Exemplary Claim
Claim 1, reproduced below with key limitations emphasized, is
illustrative:
1. An integrated circuit (IC) device, comprising:
an IC die having opposing first and second surfaces;
a carrier coupled to the first surface of the IC die;
a laminate having opposing first and second surfaces, the
first surface directly contacting the carrier, wherein a third
surface of the laminate directly contacts the second surface of
the IC die; and
a trace located on the second surface of the laminate and
electrically coupled to a bond pad located on the second surface
of the IC die. wherein the trace is confi!.mred to counle the bond
; .__, '"
pad to a circuit board.
Rejections
The Examiner rejects claims 26-27 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2.
The Examiner rejects claims 1-8, 18-19, and 23-29 under 35 U.S.C.
§ 102(b) as being anticipated by Huang et al. (US 2005/0258537 Al,
published Nov. 24, 2005). Final Act. 2-5.
The Examiner rejects claims 20-22 under 35 U.S.C. § 103(a) as being
unpatentable over Huang and Suzuki (US 2003/0003706 Al, published Jan.
2, 2003). Final Act. 5-6.
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Application 13/030,470
The Examiner alternately rejects claims 20-22 under 35 U.S.C.
§ 103(a) as being unpatentable over Huang and Appellants' Admitted Prior
Art ("AAP A"). Final Act. 6.
ISSUES
1. Did the Examiner err in concluding the recitation of "the first
trace" renders claim 26 indefinite?
2. Did the Examiner err in finding Huang discloses "a laminate
having opposing first and second surfaces, the first surface directly
contacting the carrier, wherein a third surface of the laminate directly
contacts the second surface of the IC die," as recited in claim 1?
ANALYSIS
35 U.S.C. § 112, second paragraph-Claims 26 and 27
In rejecting claim 26 under 35 U.S.C. § 112, second paragraph, the
Examiner finds the recitation of the first trace has insufficient antecedent
basis, thus rendering claim 26 indefinite. Final Act. 2; Ans. 6-7. Appellants
contend the Examiner erred because the first trace of claim 26 is directed to
the recitation of a trace of claim 1, from which claim 26 indirectly depends.
App. Br. 13; Reply Br. 9.
We agree with Appellants that an artisan of ordinary skill would have
been reasonably apprised that the first trace recitation of claim 26 refers to
the claim 1 recitation of a trace. The use of the first recitation merely
distinguishes the first trace recitation of claim 26 from the second trace
recitation of claim 25, from which claim 26 depends.
The inconsistent use of a trace (claim 1 ), the trace (claim 24 ), and the
first trace (claim 26) creates potential for initial confusion-and Appellants
should amend the claims to minimize the possibility of confusion. However,
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Application 13/030,470
the potential here is small given that there are only two traces introduced-a
trace (claim 1) and a second trace (claim 25}-and the use of first makes
clear that the first trace refers to the first trace rather than the second trace.
Therefore, we agree with Appellants the Examiner erred in concluding the
recitation of "the first trace" renders claim 26 indefinite.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112,
second paragraph, rejection of claim 26, and of claim 27, which depends
from claim 26 and is similarly rejected.
35 U.S.C. § 102(b)---Claims 1-8, 18-19, and 23-29
In rejecting claim 1, the Examiner finds Huang's first dielectric layer
23, which fills in cavity 220, discloses the claimed laminate. Final Act. 3
(citing Huang i-f 24, Figs. 1, 2a-t).
Appellants contend the Examiner erred because "the term 'dielectric'
is a generic term" that encompasses different types of materials, such as
mold compounds, that are not laminates. App. Br. 8-9; see also Reply Br. 4
("Huang does not state what specific type of material dielectric 23 is").
Appellants argue that Huang's dielectric layer 23 is likely a mold compound,
rather than a laminate, because the dielectric layer fills cavity 220,
encapsulates conductive bumps 21, and is formed using a spin coating
technique. App. Br. 9 (citing Huang i-f 21 ).
The Examiner finds "the claimed 'laminate' fails to structurally
distinguish itself from the dielectric layer 23 disclosed by Huang ...
[because] [ t ]he figures of the [Specification] consistently depict laminate
206 as a single layer dielectric material that directly contacts an underlying
structure." Ans. 2. In particular, the Examiner notes "that '[l]aminate 206
can be one of a variety of laminate materials known to those skilled in the art
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Appeal2014-006733
Application 13/030,470
(e.g., a fiber material, a substrate core material, a prepreg material, etc.)."'
Id. (citing Spec. i-f 32).
We do not find the Examiner's findings persuasive because we agree
with Appellants that the Specification illustrates that the use of a laminate
differs from the use of alternative materials such as mold compound. App.
Br. 5 (citing Spec. i-f 25); see also Spec. i-f 32 ("Unlike a mold, however,
laminate 206 can be provided without using an expensive molding process").
Appellants have provided sufficient evidence that Huang's dielectric
layer 23 may be a non-laminate material. In particular, the layer's filling
and encapsulating properties, along with Huang's disclosed use of a spin
coating technique, support Appellants' contentions. Therefore, we agree
with Appellants that the Examiner's findings do not persuasively show
Huang discloses "a laminate having opposing first and second surfaces, the
first surface directly contacting the carrier, wherein a third surface of the
laminate directly contacts the second surface of the IC die," as recited in
claim 1.
Accordingly, we cannot sustain the Examiner's 35 U.S.C. § 102(b)
rejection of claim 1, or claims 2-8, 18-19, and 23-29, which contain the
disputed recitation.
35 U.S.C. § 103(a)-Claims 20--22
The Examiner relies on Suzuki, and alternatively on AAP A, to teach
or suggest a laminate that comprises one of a fiber material (claim 20), a
substrate core material (claim 21 ), and a prepreg material (claim 22). Final
Act. 6 (citing Suzuki i-f 34; Spec. i-f 32); Ans. 5---6. However, the Examiner
does not show that Suzuki or AAP A, even in combination with Huang, teach
or suggest using a laminate material for Huang's first dielectric layer 23.
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Application 13/030,470
The Examiner does not show, for example, that the dielectric materials of
Suzuki and AAP A have the cavity filling or conductive bump encapsulating
properties of Huang's first dielectric layer 23. Huang i-f 21. The Examiner
also does not show that the dielectric materials of Suzuki and AAP A can be
applied using a conventional deposition technique, such as spin coating, as is
used to apply Huang's first dielectric layer 23. Id. As such, the Examiner's
finding that "both Suzuki and AAP A are evidence that the claimed materials
were art recognized as suitable for use as a dielectric laminate" (Final Act. 6;
see also Ans. 6) does not persuasively show that it would have been obvious
to an artisan of ordinary skill to use a laminate material for Huang's first
dielectric layer 23.
Accordingly, we also cannot sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claims 20-22.
DECISION
\Ve reverse the Examiner's decision rejecting claims 1-8 and 18-29.
REVERSED
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