Ex Parte Lee

Board of Patent Appeals and Interferences

Feb 28, 2002

09121036 (B.P.A.I. Feb. 28, 2002)

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written for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BYEONG-DUCK LEE
____________
Appeal No. 2001-1448
Application No. 09/121,036
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and MCQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 12 through 28, all of the claims remaining in
this application. On page 11 of the examiner's answer (Paper No.
18), it has been indicated that claims 26 through 28 now stand
objected to as being dependent upon a rejected base claim, but
would be allowable if rewritten in independent form.
Accordingly, only claims 12 through 25 remain for our
consideration on appeal. Claims 1 through 11 have been canceled.
Appeal No. 2001-1448
Application No. 09/121,036
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As noted on page 1 of the specification, appellant's
invention relates to a semiconductor chip package having a clip-
type lead frame and the method of fabrication thereof. More
particularly, the invention before us on appeal is limited to the
method of fabricating a chip package. A copy of representative
independent claims 12 and 21 can be found in the Appendix to
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kikuchi et al. (Kikuchi) 5,084,694 Jan. 28, 1992
Song 5,554,886 Sep. 10, 1996
Kim et al. (Kim) 5,625,221 Apr. 29, 1997
Claims 12 through 17 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Song in view of Kikuchi.
Claims 18, 19 and 21 through 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Song in view of
Kikuchi and further in view of Kim.
Rather than reiterate the examiner's specific comments
regarding the above-noted rejections and the conflicting
Appeal No. 2001-1448
Application No. 09/121,036
3
viewpoints advanced by the examiner and appellant regarding the
rejections, we make reference to the final rejection (Paper No.
11, mailed April 11, 2000) and the examiner's answer (Paper No.
18, mailed January 2, 2001) for the reasoning in support of the
rejections, and to appellant's brief (Paper No. 17, filed October
11, 2000) and reply brief (Paper No. 19, filed March 2, 2001) for
the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner's
above-noted rejections will not be sustained. Our reasons
follow.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1446,
Appeal No. 2001-1448
Application No. 09/121,036
4
24 USPQ2d 1443, 1445 (Fed. Cir. 1992)), which is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill in
the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993)). The conclusion that the claimed subject
matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Looking at the examiner's rejection of claims 12 through 17
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Song
in view of Kikuchi, we observe that the only difference
identified by the examiner between the subject matter of
appellant's independent claim 12 and the chip package seen in
Song is that the outer lead portions of Song's chip package
(e.g., Fig. 5) are not "in contact with" the side and bottom
surface portions of the package body as required in claim 12 on
appeal. To account for this difference the examiner turns to
Kikuchi, urging that this reference discloses (in Fig. 3) leads
Appeal No. 2001-1448
Application No. 09/121,036
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coming in contact with the package body. From such teachings,
the examiner concludes that it would have been obvious to one of
ordinary skill in the art "to manufacture a surface mount with
leads that extend, cove [sic, cover] and come into contact with
the package body to form a unified connection around the
assembly" (final rejection, pages 2-3).
Like appellant, and for the reasons set forth on pages 5-11
of the brief and in the reply brief, we find that it is only
through the use of impermissible hindsight that the examiner
could conclude that it would have been obvious to one of ordinary
skill in the art at the time of appellant's invention to combine
the teachings of Song and Kikuchi in the manner proposed. While
the examiner has set forth the correct test on page 7 of the
answer for determining whether a reference is analogous prior
art, the examiner has not applied that test to Kikuchi, but
instead has again merely indicated what purported teachings of
that reference the examiner is relying upon. As appellant has
noted, the detection element disclosed in Kikuchi for measuring
physical properties (e.g., flow amount or flow rate) of fluids
(col. 1, lines 7-11) is not a chip package like that addressed by
appellant and does not appear to be reasonably pertinent to the
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Application No. 09/121,036
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particular problem in the manufacture of chip packages addressed
by appellant (specification, pages 2-3).
However, even if one were to consider the collective
teachings of Song and Kikuchi, we agree with appellant's
assessment on pages 6-9 of the brief and in the reply brief that
a person of ordinary skill in the art would have found no reason,
suggestion or incentive for attempting to combine those
references so as to arrive at appellant's claimed subject matter.
Simply stated, one of ordinary skill in the art would have found
no reason to attempt to modify the bendable lead frame used in
the semiconductor chip package of Song (Figs. 3A-10) in light of
the flow detection element of Kikuchi and its continuous layer of
electrically conductive thick film (3) connecting the cylindrical
resistor (2) therein with the lead wires (5).
In that regard, we note, as our court of review indicated in
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992), that it is impermissible to use the claimed invention
as an instruction manual or "template" in attempting to piece
together isolated disclosures and teachings of the prior art so
that the claimed invention is rendered obvious. Moreover, and
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Application No. 09/121,036
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more to the point in the present appeal, we observe that the mere
fact that some prior art reference may be modified in the manner
suggested by the examiner does not make such a modification
obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir 1984). Here, the prior art relied upon by
the examiner contains no such suggestion.
Since we have determined that the teachings and suggestions
found in Song and Kikuchi would not have made the subject matter
as a whole of independent claim 12 on appeal obvious to one of
ordinary skill in the art at the time of appellant's invention,
we must refuse to sustain the examiner's rejection of that claim
under 35 U.S.C. § 103(a). It follows that the examiner's
rejection of dependent claims 13 through 17 and 20 based on Song
and Kikuchi will likewise not be sustained.
With respect to the examiner's rejection of claims 18, 19
and 21 through 25 under 35 U.S.C. § 103(a) as being unpatentable
over Song in view of Kikuchi and further in view of Kim, we agree
with appellant's assessment set forth on pages 11-16 of the
brief. More particularly, even though we would agree with the
Appeal No. 2001-1448
Application No. 09/121,036
8
examiner that Song discloses outer portions of the leads therein
which "cover" top, side and bottom surface portions of the chip
package, as broadly set forth in claim 21 on appeal, we find
nothing in the teachings of the applied references which is
suggestive of the step of "attaching a chip having a plurality of
bond pads to a first surface of the heat sink," as required in
appellant's claims 18 and 21, nor any rationale on the examiner's
part as to why this particular step would otherwise have been
obvious. Appellant made this specific argument in the paragraph
bridging pages 13 and 14 of the brief, and the examiner has
utterly failed to provide any response thereto.
While we would agree with the examiner that it would have
been obvious to one of ordinary skill in the art based on the
teachings of Kim to provide the chip package of Song with a heat
sink mounted on the central portion of the package body (40)
therein, as generally seen in Figure 12 of Kim (heat sink 121),
we share appellant's view that the applied references do not
disclose, teach or suggest the step of "attaching a chip . . . to
a first surface of the heat sink," as required in appellant's
claims 18 and 21 on appeal.
Appeal No. 2001-1448
Application No. 09/121,036
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Accordingly, we will not sustain the examiner's rejection of
these claims under 35 U.S.C. § 103(a) as being unpatentable over
Song, Kikuchi and Kim. It follows that the examiner's rejection
of dependent claims 19 and 22 through 25 based on Song, Kikuchi
and Kim will likewise not be sustained.
In light of the foregoing, we have concluded that neither of
the examiner's rejections of the claims before us on appeal under
35 U.S.C. § 103(a) is sustainable. The decision of the examiner
is, accordingly, reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/LBG
Appeal No. 2001-1448
Application No. 09/121,036
10
THE LAW OFFICES OF
FLESHNER & KIM
SUITE 840
8229 BOONE BOULEVARD
VIENNA, VA 22182
Lesley
Appeal No. 2001-1448
Application No. 09/121,036
APJ FRANKFORT
APJ STAAB
APJ MCQUADE
DECISION: REVERSED

Prepared: June 5, 2003
Draft Final
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