Ex Parte Jiang

Board of Patent Appeals and Interferences

Dec 22, 2008

09544822 (B.P.A.I. Dec. 22, 2008)

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
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Decided: December 22, 2008
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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1 Claim 6 has been cancelled and claims 33-57 have been withdrawn from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
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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)?
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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).
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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.
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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
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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
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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

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Application 09/544,822

gvw

James R. Duzan
TRASK BRITT & ROSSA
P. O. BOX 2550
Salt Lake City, UT 84110
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