Ex Parte Jiang

Board of Patent Appeals and Interferences

Nov 25, 2003

09005895 (B.P.A.I. Nov. 25, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TONGBI JIANG
__________
Appeal No. 2002-0981
Application 09/005,895
___________
ON BRIEF
___________
Before OWENS, KRATZ and TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-3, 5,
12, 13, 16-21, 25, 30 and 35-42, which are all of the claims
pending in the application.
THE INVENTION
The appellants claim a method and a screen printing system
for screening onto an electronic device support structure a
thermally curable material including a conductive adhesive.
Appeal No. 2002-0981
Application 09/005,895

2
Claims 1 and 25 are illustrative:
1. A method of forming a thermally curable material on a
support structure in an electronic device, the method comprising:
placing the electronic device support structure on a
heatable structure in a process chamber;
depositing through a screen to form thermally curable
material including a conductive adhesive on a surface of the
support structure while it is in the process chamber; and
heating the heatable surface to heat the support structure
to a temperature sufficient to cure the deposited material while
the support structure is still in the process chamber to bond the
thermally curable material to the support structure.
25. A screen-printing system, comprising:
a heatable surface adapted to hold a support structure of an
electronic device; and
a screen through which a thermally curable material
including a conductive adhesive can be deposited onto portions of
the support structure while the support structure is placed on
the heatable surface;
the system adapted to heat the heatable surface to cure
thermally curable material that may be deposited on the support
structure.
THE REFERENCES
Dery et al. (Dery) 4,659,872 Apr. 21, 1987
Pennisi et al. (Pennisi) 5,128,746 Jul. 7, 1992
Zhou et al. (Zhou) 5,985,043 Nov. 16, 1999
(filed Jul. 21, 1997)
MacKay et al. (MacKay) 5,988,487 Nov. 23, 1999
(filed May 27, 1997)
Wood et al. (Wood) 6,107,122 Aug. 22, 2000
(filed Aug. 4, 1997)
Appeal No. 2002-0981
Application 09/005,895

3
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1, 3, 5, 12, 13, 16-20, 25 and 30 over MacKay in view of
Zhou and Wood; claims 2 and 21 over MacKay in view of Zhou, Wood
and Pennisi; and claims 35-42 over MacKay in view of Zhou, Wood
and Dery.
OPINION
We reverse the rejections of claims 1-3, 5, 12, 13, 16-21
and 35-40, and affirm the rejections of claims 25, 30, 41 and 42.
The appellant states that the claims stand or fall in the
following groups: 1) claims 1-3, 5, 35 and 36; 2) claims 12, 13,
16, 17, 37 and 38; 3) claims 18-21, 39 and 40; and 4) claims 25,
30, 41 and 42 (brief, pages 3-4). Although an additional
reference is applied to claims 41 and 42, the appellants do not
argue the rejection of these claims separately from the rejection
of independent claim 25 from which they depend. We therefore
limit our discussion of the affirmed rejection to claim 25. See
In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2
(Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1997). As for the
reversed rejections, we need to address only the independent
claims to which these rejections apply, i.e., claims 1, 12
and 18.
Appeal No. 2002-0981
Application 09/005,895

1 The appellants state that “[a]s used in this application,
thermal curing includes both chemical or physical alteration of
the curable material, including altering the chemical
characteristics of an adhesive material or reflowing solder”
(specification, page 7, lines 27-30).
2 It is undisputed that MacKay’s process steps take place in
a process chamber.
4
Claims 1, 12 and 18
Each of the appellant’s claims 1, 12 and 18 requires a
thermally curable material that includes a conductive adhesive.
MacKay discloses a method for forming a thermally curable
material on a support structure in an electronic device,
comprising placing the electronic device support structure
(substrate 5) on a heatable structure (heater stage 20),
depositing through a screen (stencil 40) a thermally curable
material (solder paste 70) onto a surface of the support
structure, and heating the heatable surface to heat the support
structure to a temperature sufficient to cure the thermally
curable material to bond the thermally curable material to the
support structure (col. 3, lines 52-60; col. 5, lines 4-8).1,2
MacKay does not disclose a thermally curable material including a
conductive adhesive.
Appeal No. 2002-0981
Application 09/005,895

5
Zhou discloses a mixture of solder powder and a thermally
curable adhesive composition including a fluxing agent that also
acts as an adhesive (col. 2, lines 43-45), and teaches that
“instead of solder bumps, a solder paste comprising a solder
powder and the thermally curable adhesive composition can be
employed” (col. 10, lines 41-43) and that “[d]uring the reflow
step, the fluxing agent promotes wetting of the solder to the
metallization patterns and, simultaneously, the fluxing agent
itself crosslinks to mechanically bond and encapsulate the
surfaces and their metallizations” (col. 2, lines 59-65).
The portion of Wood relied upon by the examiner is the
abstract which discloses using conductive adhesive bumps, rather
than solder bumps, on dies to provide compliant connections with
electrical connectors.
The examiner argues:
Zhou teaches that it is obvious to use a thermally
curable adhesive compound instead of solder bumps.
Wood discloses in the abstract that it is obvious to
use conductive adhesive as the thermally curable
material. Therefore, it would have been obvious to a
person of ordinary skill in the art at the time the
invention was made to modify MacKay by inventions of
Zhou and Wood in order to make use of thermally curable
material including conductive adhesive. [answer,
page 5]
* * *
Zhou and Wood are relied on as a [sic] secondary
references only to teach that solder paste can be
Appeal No. 2002-0981
Application 09/005,895

6
substituted by a thermally curable adhesive material
(Zhou) and conductive adhesive (Wood). [answer, page 8]

For a prima facie case of obviousness to be established, the
applied prior art must be such that it would have provided one of
ordinary skill in the art with both a motivation to carry out the
claimed invention and a reasonable expectation of success in
doing so. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988).
MacKay teaches that “with the stencil and plate remaining in
place on top of the substrate, the substrate is heated to a
temperature sufficient to reflow the solder paste material. In
this manner, the solder paste is pulled away (i.e., detached)
from the stencil side walls and anchored to the substrate pad
before the stencil is removed” (col. 2, lines 34-39). Zhou,
however, teaches that during reflow the fluxing agent, which acts
as an adhesive, “crosslinks to mechanically bond and encapsulate
the surfaces and their metallizations” (col. 2, lines 63-65),
“hardens quickly and soon after the solder bump melts” (col. 11,
line 61), and “forms strong adhesion of the cured composition to
the chip, substrate and solder joints” (col. 11, lines 66-67).
Appeal No. 2002-0981
Application 09/005,895

3 The examiner does not rely upon Pennisi or Dery for any
disclosure that remedies the above-discussed deficiency in
MacKay, Zhou and Wood as to the independent claims.
7
The examiner has not explained why, if Zhou’s solder
powder/fluxing agent, which bonds surfaces together during
reflow, were substituted for MacKay’s solder paste, one of
ordinary skill in the art would have had a reasonable expectation
that the solder material would be pulled away from the stencil
side walls and anchored to the substrate pad as desired by
MacKay. Also, the examiner has not explained why one of ordinary
skill in the art would have had a reasonable expectation that the
use in MacKay’s method of Zhou’s solder powder/fluxing agent,
which bonds surfaces together during reflow, would permit the
stencil to remain in place during reflow and then be removed as
required by MacKay. The examiner further has not explained why,
in view of these considerations, one of ordinary skill in the art
would have had a reasonable expectation of success in using
Wood’s conductive adhesive in MacKay’s method.3
Accordingly, we conclude that the examiner has not carried
the burden of establishing a prima facie case of obviousness of
the method claimed in the appellant’s claims 1-3, 5, 12, 13, 16-
21 and 35-40.
Appeal No. 2002-0981
Application 09/005,895

4 The appellant’s claim 25 does not specify the amount of
conductive adhesive in the thermally curable material.
8
Claim 25
MacKay discloses a screen-printing system (col. 4, lines 48-
52) comprising a heatable surface (20) adapted to hold a support
structure (5) of an electronic device (col. 3, lines 54-63), a
screen (40) through which thermally curable material (70) can be
deposited onto portions of the support structure while the
support structure is placed on the heating surface (col. 4,
lines 23-64), and a system adapted to heat the heatable surface
to cure the thermally curable material on the support structure
(col. 5, lines 4-10).
MacKay does not disclose a thermally curable material
including a conductive adhesive. The system claimed in the
appellant’s claim 25, however, does not include such a thermally
curable material. The claim merely requires that the system is
capable of screening and curing a thermally curable material
including a conductive adhesive. Because Wood’s conductive
adhesive (col. 7, lines 25-27), like MacKay’s solder (col. 3,
lines 59-60), can form bumps on bond pads, it reasonably appears
that MacKay’s system is capable of screening solder containing at
least a trace amount of conductive adhesive.4 Also, because
Appeal No. 2002-0981
Application 09/005,895

9
Wood’s conductive adhesive cures at a temperature as low as 100ºC
(col. 7, lines 18-19), which is below MacKay’s exemplified 183ºC
solder melting temperature (col. 5, line 47), it reasonably
appears that MacKay’s system is capable of curing solder
containing at least a trace amount of conductive adhesive.
The appellant argues with respect to claim 25 that “MacKay
does not disclose a conductive adhesive as the thermally curable
material” (brief, page 8). What claim 25 recites is “a thermally
curable material including a conductive adhesive”. The claim
does not require a conductive adhesive as the thermally curable
material. Regardless, as discussed above, the system claimed in
claim 25 does not include the thermally curable material.
Accordingly, we affirm the rejections of claim 25 and
claims 30, 41 and 42 that stand or fall therewith.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 3, 5, 12,
13 and 16-20 over MacKay in view of Zhou and Wood, claims 2
and 21 over MacKay in view of Zhou, Wood and Pennisi, and
claims 35-40 over MacKay in view of Zhou, Wood and Dery, are
reversed. The rejections under 35 U.S.C. § 103 of claims 25
and 30 over MacKay in view of Zhou and Wood, and claims 41 and 42
over MacKay in view of Zhou, Wood and Dery, are affirmed.
Appeal No. 2002-0981
Application 09/005,895

10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a). AFFIRMED-IN-PART
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CATHERINE TIMM )
Administrative Patent Judge )
TJO/ki
Appeal No. 2002-0981
Application 09/005,895

11
Timothy N. Trop
Trop, Pruner, Hu & Miles
8554 Katy Freeway, Ste. 100
Houston, TX 77024