Ex Parte JiangDownload PDFBoard of Patent Appeals and InterferencesDec 22, 200809544822 (B.P.A.I. Dec. 22, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TONGBI JIANG ____________ Appeal 2008-4735 Application 09/544,822 Technology Center 2800 ____________ Decided: December 22, 2008 ____________ Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and CARLA M. KRIVAK, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1-5, 7-32, and 58-64.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Claim 6 has been cancelled and claims 33-57 have been withdrawn from consideration. Appeal 2008-4735 Application 09/544,822 STATEMENT OF CASE Appellant’s claimed invention is an underfill method for filling the gap between a bumped or raised semiconductor die or semiconductor device and a substrate (Spec. 2:5-9). The method includes applying a liquid wetting agent layer to the surface of the substrate and/or semiconductor device, attaching the substrate and semiconductor device, and applying a flowable underfill material between the substrate and semiconductor device such that it contacts the wetting agent layer. Independent claim 58, reproduced below, is representative of the subject matter on appeal. 58. A method for attaching a semiconductor assembly, said method comprising: providing a semiconductor device having an active surface; providing a substrate having an upper surface; applying a liquid wetting agent layer to one of said active surface of said semiconductor device and said upper surface of said substrate; connecting said semiconductor device to said substrate so that said active surface of said semiconductor device faces said upper surface of said substrate; and applying a flowable underfill material between the substrate and the semiconductor device, such that said flowable underfill material contacts said applied wetting agent layer. REFERENCES Plueddemann US 4,231,910 Nov. 4, 1980 Pluddemann US 4,961,967 Oct. 9, 1990 Banerji US 5,203,076 Apr. 20, 1993 Akram US 5,766,982 June 16, 1998 Yamada US 5,959,363 Sep. 28, 1999 2 Appeal 2008-4735 Application 09/544,822 Hieda US 6,303,277 B1 Oct. 16, 2001 (filed Aug. 31, 1999) Schultz US 6,350,840 B1 Feb. 26, 2002 (filed Jun. 18, 1999) The Examiner rejected claims 58-61 under 35 U.S.C. § 102(e) based upon the teachings of Yamada. The Examiner rejected claims 1-5, 7-12, 15, 22, 62, 63, and 64 under 35 U.S.C. § 103(a) based upon the teachings of Yamada, Schultz, and Pluddemann ‘967. The Examiner alternatively rejected claim 64 under 35 U.S.C. § 103(a) based upon the teachings of Yamada, Schultz, Pluddemann ‘967, and Hieda. The Examiner rejected claims 13, 14, 16-21, and 23-30 under 35 U.S.C. § 103(a) based upon the teachings of Yamada, Schultz, Pluddemann ‘967, and Akram. The Examiner rejected claims 31 and 32 under 35 U.S.C. § 103(a) based upon the teachings of Yamada, Schultz, Pluddemann ‘967, and Banerji. Appellant contends Yamada does not anticipate claim 58 because it does not teach “applying a liquid wetting agent layer to one of … semiconductor device and…substrate” (App. Br. 14; Reply Br. 2). ISSUES Did the Examiner err in finding the resin layer of Yamada anticipates the liquid wetting agent layer of Appellant’s claimed invention under 35 U.S.C. § 102 (e)? 3 Appeal 2008-4735 Application 09/544,822 Did the Examiner err in finding the claims 1-5, 7-32, and 62-64 obvious over various combinations of Yamada, Schultz, Pluddemann ‘967, Hieda, Akram, and Banerji? FINDINGS OF FACT 1. Appellant’s method applies a liquid wetting agent layer to a surface of a semiconductor device, a surface of a substrate, or both. The semiconductor surface and substrate surface are connected to each other. A flowable underfill material is applied between the substrate and the semiconductor device such that it contacts the applied wetting agent layer (Spec. 5:1-9; cls. 1, 10, 58, 62, 64). 2. The liquid wetting agent layer is a silane layer 2 that can be silane based (Spec. 5:10-11; Spec. 9:25-26; Spec 10:8-10; cls. 3, 61, 62). The silane layer 2 increases the surface tension on the surface where it is applied allowing the underfill material to fill the gap between the semiconductor and the substrate via capillary action forces in a lesser length of time (Spec. 5:13-16). The silane layer can be any silane base material such as glycidoxypropyltrimethoxysilane and ethyltrimethoxysilane (Spec. 5:16-17; Spec 10: 8-10) as long as it promotes a sufficient wetting effect (Spec. 10:13). 3. Yamada teaches a semiconductor device having an improved encapsulating resin. A first resin 204 encapsulates a wiring circuit board and a second resin 205 encapsulates the surface of the semiconductor device. A third resin 206 is then dispensed between the first and second resins (col. 56, ll. 14-23; col. 57; ll. 15-20; Figs 56A-D). 4 Appeal 2008-4735 Application 09/544,822 4. The first and second resins include 3 parts by weight of a silane coupling agent (col. 56, ll. 29-39). 5. A wetting agent is defined as “a natural or synthetic compound which reduces the surface tension of water or another liquid (see Surface active substances).”2 . 6. Wettability (chemistry) is defined as “the ability of any solid surface to be wetted when in contact with a liquid; that is, the surface tension of the liquid is reduced so that the liquid spreads over the surface.” McGraw-Hill Dictionary of Scientific and Technical Terms, McGraw-Hill Companies, Inc., available at http://www.answers.com/topic/wettability. PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference anticipates a claim must focus on what subject matter is encompassed by the claim and what subject matter is described by the reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983), it is only necessary for the claims to “‘read on’ something disclosed in the reference, i.e., all limitations of the claim are found in the reference, or ‘fully met’ by it.” 2 CONCISE ENCYCLOPEDIA CHEMISTRY, Mary Eagleson, 1994, available at http://books.google.com/books?id=Owuv- c9L_IMC&pg=PA1173&lpg=PA1173&dq=liquid+wetting+agent+semicond uctors&source=web&ots=zVq1rdKf8&sig=liWBhxi4bS_R4bXtM7H3TG6a -Yo&hl=en&sa=X&oi=book_result&resnum=8&ct=result. 5 Appeal 2008-4735 Application 09/544,822 In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner’s burden is met, the burden then shifts to the Appellants to overcome the prima facie case with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). ANALYSIS Anticipation The Examiner rejected claims 58-61 under 35 U.S.C. § 102(e) over Yamada. The Examiner contends Yamada teaches all the features of these claims. Particularly, the Examiner states the resin encapsulation layer 205 corresponds to the liquid wetting agent layer of Appellant’s claimed invention because this layer is “molten” when coated on the surface of the wiring board (Ans. 4). Appellant asserts Yamada does not teach a liquid wetting agent layer as claimed, as it is not the polymer film 208 nor the second encapsulation resin 205 (Reply 3-4). Appellant asserts that the polymer film 208 is formed of wax (Reply Br. 3), and although it has “wettability” this is not the same as 6 Appeal 2008-4735 Application 09/544,822 a “liquid wetting agent.” This argument is consistent with the ordinary and customary meaning of these terms (FF6; FF5). Additionally, Appellant contends that Yamada’s encapsulation layer 205 is formed of resin that includes “3 parts by weight of silane coupling agent” (col. 56, l. 35; Reply Br. 4). Thus, the “3 parts of silane of the 453.5 total parts of the material of the second encapsulation resin layer 205…is present as a coupling agent so that that the fused silica (mineral filler) and the resin can react to promote a stronger bond at the interface thereof” (Reply Br. 6). This is not the same as a silane layer or silane-based layer that forms the liquid wetting agent of Appellant’s claimed invention (FF 2). The Examiner contends layer 205, because it is “molten” corresponds to a liquid wetting agent (Ans. 4). However, as noted by Appellant, a wetting layer is a particular type of layer that, among other things, reduces surface tension of water or another liquid (FF5). The resin layer 205 of Yamada does not correspond to the liquid wetting layer for the reasons provided by Appellant (Reply Br. 6). Nor is there any evidence on the record before us that would establish that this is the case. Thus, Yamada does not anticipate claim 58. Obviousness The Examiner further rejected claims 1-5, 7-32, and 61-64 as obvious over various combinations of Yamada with Schultz, Pluddemann ‘967, Hieda, Akram, and Banerji under 35 U.S.C. § 103(a). Independent claims 1, 10, and 64, contain substantially the same limitations as those in claim 58. None of the remaining cited references cures Yamada of its deficiencies. Claim 62, however, merely calls for a “silane-based” material. Appellant’s specification states the silane layer is comprised of any silane 7 Appeal 2008-4735 Application 09/544,822 base material (FF2). The evidence before us indicates that a “silane-based” material layer would have silane as a base and would promote sufficient wettability (FF2). Yamada’s epoxy resin layer including “3 parts by weight of silane coupling agent” (col. 56, l. 34) does not meet either of those requirements. First, the layer is an epoxy resin layer having a majority of resin and filler (col. 56. ll. 31-33) rather than silane. Second, the silane in the epoxy resin layer is merely acting as a coupling agent; it is not present for the purpose of promoting wettability. In fact, it discourages wettability as it acts as a coupling agent. Again, none of the remaining cited references cures Yamada of its deficiencies. Thus, the Examiner has not provided a prima facie case of obviousness with respect to claims 1, 10, 62, and 64, and thus claims 2-5, 7- 9, 11-32, 61, and 63, which depend therefrom, over Yamada in combination with Schultz, Pluddemann ‘967, Hieda, Akram, and Banerji. CONCLUSION The Examiner erred in rejecting claims 58-61 as anticipated by Yamada under 35 U.S.C. § 102(e). The Examiner erred in rejecting claims 1-5, 7-32, and 61-64 as obvious under 35 U.S.C. § 103(a). DECISION The Examiner’s decision in rejecting claims 1-5, 7-32, and 58-64 is reversed. REVERSED 8 Appeal 2008-4735 Application 09/544,822 gvw James R. Duzan TRASK BRITT & ROSSA P. O. BOX 2550 Salt Lake City, UT 84110 9 Copy with citationCopy as parenthetical citation