Ex Parte Lee et al

Patent Trial and Appeal Board

May 5, 2016

11947505 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111947,505 11129/2007 Tae Heon Lee
13143 7590 05/09/2016
Law Office of Kevin Jackson
6315 E. Cactus Wren Rd
Paradise Valley, AZ 85253
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.
AMKOR-053GlC 1032
EXAMINER
CAO,PHATX
ART UNIT PAPER NUMBER
2817
NOTIFICATION DATE DELIVERY MODE
05/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kevinj acksonlaw@gmail.com
kjacksonlaw@cox.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AE HEON LEE and MU HW AN SEO
Appeal2014-009243
Application 11/947,505
Technology Center 2800
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009243
Application 11/947,505
SUMMARY
We have jurisdiction under 3 5 U.S. C. § 6(b ). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm-in-part and enter a new ground of rejection.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
claims 12, 30, and 31 as obvious under 35 U.S.C § 103(a).
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 12-31 (App. Br. 1 ): i,2
Claims 12-30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Sharma (US 6,420,779 Bl; published July 16, 2002), Nakamura
(US 5,986,333; published Nov. 16, 1999), and Yagi (US 6,201,292 Bl;
published Mar. 13, 2001). Final Act. 2-6.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sharma and Yagi. Final Act. 6-8.
1 Throughout this Opinion, we refer to (1) the Final Rejection mailed
November 18, 2013 ("Final Act."); (2) the Appeal Brief filed April 17, 2014
("App. Br."); (3) the Examiner's Answer mailed July 7, 2014 ("Ans."); and
(4) the Reply Brief filed August 29, 2014 ("Reply Br.").
2 The Examiner had additionally rejected claim 31 under 35 U.S.C. § 112,
first paragraph (Final Act. 2), but this rejection has been withdrawn (Ans. 2).
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Application 11/947,505
SUMMARY OF THE INVENTION
Appellants' invention is a semiconductor package having a reduced
thickness. Spec. ,-r 3. 3 In the art, semiconductor devices are commonly
encapsulated in a package. Id. ,-r 4. Previous techniques to reduce a
package's thickness involved back-grinding the semiconductor chip. Id. ,-r 9.
Chips thinned by back-grinding, however, are prone to damage by warping.
Id. Appellants' invention provides a thin package that reduces the amount of
back-grinding. Id. ,-r 10.
THE OBVIOUSNESS REJECTION OF CLAIM 31 OVER
SHARMA ANDY AGI
Independent claim 31 is reproduced below with emphasis added.
31. A semiconductor package, comprising:
a chip paddle defining opposed, generally planar top and
bottom surfaces, the chip paddle having a paddle thickness
between the top and bottom surfaces thereof;
a plurality of leads extending at least partially about the
chip paddle, each of the leads having:
opposed outer and inner lead ends;
opposed, generally planar upper and lower lead
surfaces and a lead thickness between the upper and lower
lead surfaces thereof; and
a half-etched portion formed within the lower lead
surface and extending to the inner lead end, the half-etched
portion defining an etched lead surface [that] is disposed
in opposed relation to the upper lead surface;
3 Throughout this Opinion, references to the Specification ("Spec.")
correspond to the Specification filed March 7, 2012, titled "CLEAN
SUBSTITUTE SPECIFICATION."
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Application 11/947,505
the lower lead surface of at least some of the leads defining
a generally straight peripheral edge segment at the outer lead end
and an arcuate peripheral edge segment at the half etched
portion;
a semiconductor chip attached to the top surface of the
chip paddle and electrically connected to at least one of the leads;
and
an encapsulation material at least partially encapsulating
the leadframe 4 and the semiconductor chip such that at least
portions of the lower surfaces of the leads are exposed from the
encapsulation material;
wherein the lead thickness of each of the leads exceeds
the paddle thickness.
Contentions
The Examiner finds that Sharma teaches every element of claim 31,
except for the recited (1) lead thickness exceeding the paddle thickness and
(2) arcuate peripheral edge segment. Final. Act. 6-8. The Examiner finds
that Yagi discloses the recited lead-to-paddle thickness relationship and
concludes that it would have been obvious to have incorporated into
Sharma' s package, Yagi's thickness relationship, as recited in claim 31.
Id. at 8. For the arcuate peripheral edge segment, the Examiner finds that an
arcuate shape does not serve a particular, unobvious purpose, produce an
unexpected result, or is otherwise critical. Id. at 7-8. Based upon this
premise, the Examiner concludes that it would have been obvious to change
the shape of Sharma's leads so as to have arcuate peripheral edge segments
at the half etched portion. Id. at 8.
4 The Examiner should consider whether this recitation of "the leadframe" is
supported by adequate antecedent basis.
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Regarding paddle thickness, Appellants argue that the Sharma-Yagi
combination is improper because Sharma teaches away from the claimed
invention. App. Br. 12-13. According to Appellants, Shanna's leads and
paddle are coplanar, and Shanna's wire-bond lengths can be reduced to
improve performance and reliability. Id. at 13 (citing Sharma, col. 3, 11. 8-
39); see also Reply Br. 6-7. In Appellants' view, Yagi's configuration
would lengthen the wire bonds and increase bonding process's complexity,
which is contrary to Shanna's disclosure. App. Br. 13; see also Reply Br. 7.
Furthermore, Appellants contend that the Examiner has not shown
that the arcuate edge would have been obvious. App. Br. 9-11; Reply Br. 4--
6. Appellants argue that an arcuate shape provides additional surface area
for (1) better encapsulation-material adherence, and (2) increased contact
area for attaching the package. App. Br. 11.
Issues
I. Does Sharma teach away from the invention of claim 31?
II. Has the Examiner shown by a preponderance of the evidence that
"arcuate peripheral edge segment," as recited in claim 31, would have been
obvious?
Analysis
I.
We are unpersuaded by Appellants' teaching-away argument.
App. Br. 12-13; see also Reply Br. 6-7. Specifically, Sharma does "not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009). Instead, the cited passages do no more than
articulate a benefit associated with leads that are coplanar with a chip
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paddle-a reduction in the complexity of the lead frame manufacturing
process. Sharma, col. 3, 11. 26-27. In fact, Sharma goes on to say that in
addition to reducing manufacturing complexity, "[a] half etch technique ...
can be used for the lead frame manufacturing process to allow a reduction in
package area." Id. col. 3, ll.37-39.
Furthermore, Shanna's design is not without its own drawbacks. For
example, while not etching Sharma' s paddle may reduce manufacturing
complexity, this co-planarity between the upper surfaces of the paddle and
the leads requires a thicker paddle 120 relative to the lead (compare id. Fig.
1 with Yagi, Fig. 5). A thicker paddle could either increase a package's
overall thickness or limit the available volume of encapsulating material for
running the bond wire. See Sharma, Fig. 1; see also id. col. 6, 11. 24--28
(explaining that Yagi's FIG. 5 embodiment, which employs an etched
paddle, "is provided a large allowance in loop height of each wire 28 for
connecting" the chip terminals and inner leads).
Moreover, manufacturing Shanna's package may require changes to
existing assembly infrastructure and presents at least some learning curve.
Id. col. 3, 11. 42--44. That is, Sharma's package provides certain benefits, but
those benefits are not without costs. Id. Based on Shanna's explanation
(id.), one would look to other package designs when those costs outweigh
the benefits for a given situation.
For at least this reason, one of ordinary skill in the art would not have
been discouraged from pursuing other options after reading Sharma. Rather,
Yagi's various paddle-to-lead etch configurations in Figures 1 and 3 to 8
show that different paddle-to-lead-thickness arrangements were known
functionally equivalent structures for chip packages. See Smith v. Hayashi,
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Application 11/947,505
209 USPQ 754, 759 (BPAI 1980). Specifically, Yagi teaches that etched
leads can be used with chips mounted on unetched paddles (FIG. 4) or,
alternatively, with chips mounted on paddles that have their upper, chip-side
surface etched (FIG. 5). In either of these known alternative configurations,
the die paddle's bottom surface is exposed from the encapsulant, thereby
allowing equivalent beneficial heat transfer from the package. Compare
Yagi col. 5, 11. 49-54 with id. col. 6, 11. 19-24.
II.
We are persuaded, though, by Appellants' argument (App. Br. 9-11)
that the Examiner has not established a prima facie case that an "arcuate
peripheral edge segment" would have been obvious.
At the outset, we infer that the Examiner might be conflating two
distinct legal doctrines. The Examiner seems to first take the position that
the arcuate shape constitutes a non-functional, aesthetic design change.
Final Act. 7-8; see Manual of Patent Examining Procedure (MPEP)
§ 2144.04.I, 9th ed., Rev. 07.2015, Nov. 2015 ("AESTHETIC DESIGN
CHANGES"). But the Examiner then concludes that the arcuate profile
constitutes an insignificant (as opposed to non-functional) change in shape.
Final Act. 8 (citing In re Dailey, 357 F.2d 669 (CCPA 1966)); see MPEP
§ 2144.04.IV.B ("Changes in Shape").
Regardless, though, of whether the Examiner did conflate these two
legal principles, as noted, the Examiner ultimately relies on a prior judicial
decision in an attempt to establish a prima facie case of obviousness. But "it
is facts appearing in the record, rather than prior decision in and of
themselves, which must support the legal conclusion of obviousness under
35 U.S.C. § 103." In re Cofer, 354 F.2d 664, 835 (CCPA 1966). And here,
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Application 11/947,505
the Examiner's position (Final Act. 6-7) is not supported by the facts in this
record.
In Dailey, the court found that the shape did not have a functional
significance. Dailey, 357 F.2d at 672-73. But here, Appellants have shown
that the functional significance of arcuate shapes are well-known. See
App. Br. 10-11. Namely, one cited advantage is additional surface area for
better adherence of the encapsulant to the leads. 5 Id. at 11. This point alone
is sufficient to undermine the Examiner's rationale (Final Act. 7-8).
Furthermore, the Examiner requires that the evidence of an advantage
must be in the Specification. Ans. 4--5. However, "obviousness is
determined by the totality of the record including, in some instances most
significantly, the evidence and arguments proffered during the give-and-take
of ex parte patent prosecution." In re Chu, 66 F.3d 292, 299 (Fed. Cir.
1995). Indeed, Examiners are instructed that "evidence and arguments
directed to advantages not disclosed in the specification cannot be
disregarded" in determining whether a claimed invention would have been
obvious. See MPEP § 716.02(±) (emphasis added). Here, Appellants have
5 Appellants also provide evidence that it was known to provide arcuate
shapes on re-entrant comers of concrete slabs in order to reduce stress
concentration and thereby reduce crack formations in these concrete slabs.
App. Br. 11 (citing Crews (US 5,743,065; issued Apr. 28, 1998)). We
question whether the record sufficiently demonstrates that the desire to
reduce stress in brittle concrete slabs has any significant relevance to the
present application's minute, ductile wire leads. This is especially true in
the absence of any showing that these wire leads are prone to load-induced
cracking. Even Appellants acknowledge that the concrete arts are "non-
analogous" to the present invention. App. Br. 11. We need not address this
question, though, because the attorney argument regarding the functionality
of adhering encapsulant to the leads is sufficient to rebut the Examiner's
conclusion that the arcuate shape is a mere aesthetic design choice.
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provided persuasive argument that the arcuate shape produces a functional
effect (App. Br. 10-11). This argument (id.) is sufficient to rebut the
Examiner's obviousness conclusion (Final Act. 7-8). For this reason alone,
we will not sustain the Examiner's rejection of claim 31.
This is not the end of the inquiry, though. Regardless of the
shortcomings in the rejection's evidence and reasoning, Appellants have
admitted that it was known at the time of the invention to configure the inner
edges of leadframe leads to possess an arcuate profile. Specifically,
Appellants present the following argument in relation to the later withdrawn
enablement rejection:
Appellant's specification at paragraph [0025] expressly
incorporates by reference, among other things, U.S. Patent
7, 102,208 ("'208") by the same inventors of the present
application and filed on the same day as the priority date of the
present application. Appellant asserts that under Section
2163.07(b) of the MPEP regarding incorporation by reference,
"[t]he information incorporated is as much a part of the
application as filed as if the text was repeated in the application,
and should be treated as part of the text of the application as
filed."
App. Br. 7-8 (emphasis added).
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Application 11/947,505
The '208 Patent referenced by Appellants is Lee (US 7,102,208 Bl;
issued Sept. 5, 2006). Lee's Figure 3 is reproduced below:
--r···························)
FIG. 3
(PRIOR ART)
Lee, FIG. 3---labeled "PRIOR ART"-shows internal leads 130 with
arcuate-shaped edges.
Lee additionally states "[i]n further description of the above-described
semiconductor package design aspects, reference is now made to FIGS. 1-3
where a prior art leadframe 100 and semiconductor package 200 are shown.
Referring specifically now to FIG. 1, a typical prior art leadframe 100 is
shown in detail." Lee col. 1, 11. 63-67 (emphasis added).
To summarize, then, Appellants acknowledge that leads with arcuate-
shaped edges constituted prior art as of the filing date of Lee. Appellants
also acknowledge that Lee was filed by the same inventors on the same date
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as the present application. As such, Appellants effectively acknowledge that
providing leads with arcuate shaped edges constituted prior art relative to the
present application. See In re Nomiya, 509 F.2d 566, 571(CCPA1975)
(treating drawings labeled as "prior art" to be an admission) (cited in
MPEP § 2129).
Furthermore, Appellants present no arguments on appeal to explain
why Lee's embodiments depicted in FIGs. 1-3 would not constitute prior
art. See generally App. Br. Rather, Appellants acknowledge that "the
'208 reference expressly states that such a structure is formed by either
stamping or etching processes as known in the art." App. Br. 8.
For these reasons, Lee's Figures 1-3 qualify as prior art even if Lee's
issued patent does not qualify under 35 U.S.C. § 102. Riverwood Int'! Corp.
v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354 (Fed. Cir. 2003), cited in
MPEP § 2129. Accordingly, we find unpersuasive Appellants' arguments
that there is insufficient evidence that providing an arcuate edge segment in
the electronic arts was known at the time of the invention, or that such a
modification would be based solely on disfavored hindsight. App. Br. 10.
We instead find, as discussed above, shaping Shanna's leads in the
manner shown in Lee's Figure 3 would have been obvious because this
shape was known for leadframe leads. Employing an arcuate profile for
leads that are specifically etched in a manner recited by claim 31, therefore,
merely constitutes a simple substitution of one known element ( arcuate
edges) for another element (straight edges) to obtain predictable results
(encapsulated leads).
For the reasons, then, we newly reject independent claim 31 under
§ 103 as obvious over Sharma, Yagi, and the Appellants' admission in Lee.
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In our rejection, we adopt the Examiner's findings and conclusions
regarding claim 31 's rejection (Final Act. 6-8) except for those relating to
the "arcuate peripheral edge segment" (see id. at 7-8). We designate this
rejection as a new ground.
THE OBVIOUSNESS REJECTION OVER SHARMA, NAKAMURA,
AND YAGI
Claims 26--29
Independent claim 26, reproduced below with our emphasis, is
illustrative of claims 26-29:
26. A semiconductor package, comprising:
a chip paddle defining opposed, generally planar top and
bottom surfaces and multiple peripheral edge segments, the chip
paddle having a paddle thickness between the top and bottom
surfaces thereof;
a plurality of leads segregated into at least two sets [that]
extend at least partially about the die paddle, each of the leads
having:
opposed, generally planar upper and lower lead
surfaces and a lead thickness between the upper and lower
lead surfaces thereof; and
a half-etched portion formed within the lower lead
surface, the half-etched portion defining a generally planar
etched lead surface [that] is disposed in opposed relation
to the upper lead surface;
the half-etched portions of at least some of the leads
of each set being angled toward each other and a central
region of a corresponding one of the peripheral edge
segments of the chip paddle;
a semiconductor chip attached to the top surface of the
chip paddle and electrically connected to at least one of the leads;
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Application 11/947,505
wherein the lead thickness of each of the leads exceeds the
paddle thickness such that the top surface of the chip paddle
extends in generally co-planar relation to the etched lead surface
of each of the leads.
Contentions
The Examiner finds that Sharma teaches every element of claim 26
except for the recited (1) angled leads, and (2) lead thickness with a co-
planar relationship between the tops of the chip paddle and leads.
Final Act. 3-5. The Examiner finds that Nakamura discloses angled leads
and that Yagi discloses the required lead thickness, and the Examiner
concludes that the combination of these references renders claim 26 obvious
under § 103. Id.
Regarding the recited angled leads, the Examiner concludes that it
would have been obvious to angle Sharma's leads, as shown by Nakamura.
Id. at 3--4. According to the Examiner, doing so would have made the leads
closer to the chip paddle and reduced the length of the bonding wires.
Id. at 4.
Appellants contend that Shanna's leads do not have bends or steps.
App. Br. 16. In Appellants' view, Nakamura is different from Sharma
because Nakamura bends a portion of the leads when angling. Id. In
Appellants' view, bending leads is contrary to the teachings of Sharma. Id.
Additionally, Appellants argue that Nakamura does not disclose that the
half-etched portion could be angled. Id. at 17.
Appellants further argue that Sharma lacks lead thickness with a co-
planar relationship between the chip paddle and lead surface required by
claim 26. Id. at 16.
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Application 11/947,505
Issues
Has the Examiner established by a preponderance of the evidence that
I. Sharma and Nakamura collectively teach or suggest the
angled leads, as recited in claim 26?
II. Sharma and Yagi collectively teach or suggest a lead
thickness such that "the top surface of the chip paddle extends in
generally co-planar relation to the etched lead surface of each of the
leads," as recited in claim 26?
Analysis
We are unpersuaded by Appellants' arguments in connection with
claim 26. For the reasons discussed below, we sustain the Examiner's
rejection of claim 26.
I.
Regarding the unbent leads, the portion cited by Appellants merely
states that the leads do not have bends or steps. App. Br. 16 (citing Sharma,
col. 3, 11. 55-57). That stated preference is also insufficient to teach away
from bent leads. Specifically, Appellants do not identify any passage from
Sharma explicitly correlating unbent leads to increasing resistance and
reducing electrical performance. Id. at 16---17. Although Appellants have
identified several differences between Sharma and Nakamura (id.), no
evidence on this record reasonably indicates that these differences would
have led one of ordinary skill away from the Examiner's proposed
modification of bending Sharma' s leads.
We are also unpersuaded by Appellants' argument that Nakamura
does not disclose that the half-etched portion could be angled (id. at 17).
Appellants' argument against Nakamura (id.) amounts to an individual
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attack. An individual attack does not show non-obviousness where, as here,
the rejection is based on the references' collective teachings. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Specifically, the Examiner relies on Nakamura for the limited purpose
of showing angled leads. Final Act. 3--4. The Examiner finds that Sharma
teaches a half-etched portion. Id. at 3. And contrary to Appellants'
argument (App. Br. 17), the Examiner's rationale for combining these
teachings (Final Act. 4) is not derived solely from Appellants' disclosure.
Instead, the Examiner finds that bending the lead' s end portions would bring
the leads closer to the chip paddle. Id. On this record, the Examiner has
established a prima facie case that Appellants have not rebutted
persuasively.
Accordingly, we find that the Examiner did not err in concluding that
the recited angled leads would have been obvious.
II.
Furthermore, Appellants' argument that Sharma lacks the paddle
thickness recited in claim 26 (App. Br. 16) is unpersuasive. The Examiner
does not rely on Sharma to address this limitation. Rather, the Examiner
relies on Yagi's Figure 5 to address this limitation. Final Act. 4-5.
Specifically, Yagi's Figure 5 is reproduced below with our annotations
illustrating the Examiner's mapping (id).
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29
24a
FIG. 5
f
22b
Yagi's Figure 5 showing a semiconductor package annotated with
arrows pointing to the top surfaces of the lead's etched portion (left)
and the chip paddle (right).
Regarding these findings (Final Act. 4--5), Appellants do not explain
why Yagi's Figure 5 lacks the recited co-planar relationship between top of
the chip paddle and etched lead surface. App. Br. 16. Accordingly, we are
unpersuaded that the Examiner erred in concluding that this relationship
would have been obvious.
We, therefore, sustain the Examiner's rejection of claim 26, as well as
dependent claims 27-29, not argued separately.
Claims 12-25 and 30
Independent claim 12, reproduced below with our emphasis, is
illustrative of claims 12-25, as well as claim 30, which depends from
independent claim 26:
12. A semiconductor package, comprising:
a leadframe comprising:
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a chip paddle defining opposed, generally planar top
and bottom surfaces and multiple peripheral edge
segments, the chip paddle having a paddle thickness
between the top and bottom surfaces thereof;
a plurality of leads segregated into at least two sets
[that] extend at least partially about the chip paddle, each
of the leads having:
opposed, generally planar upper and lower lead
surfaces and a lead thickness between the upper and lower
lead surfaces thereof;
an inner lead end; and
a half-etched portion formed within the lower lead
surface and extending to the inner lead end, the half-etched
portion defining an etched lead surface [that] is disposed
in opposed relation to the upper lead surface;
the half-etched portions of at least some of the leads
of each set being angled toward each other and a central
region of a corresponding one of the peripheral edge
segments of the chip paddle;
a semiconductor chip attached to the top surface of the
chip paddle and electrically connected to at least one of the leads;
and
an encapsulation material at least partially encapsulating
the leadframe and the semiconductor chip such that at least
portions of the lower surfaces of the leads are exposed from the
encapsulation material;
wherein the chip paddle thickness is in the range of from
about 25% to about 75% of the lead thickness of each of the
leads.
Contentions
The Examiner finds that Sharma teaches every element of claim 12
except for the recited (1) angled leads, and (2) paddle thickness.
Final Act. 3-5. As with independent claim 26, the Examiner finds that
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Nakamura discloses angled leads and that Yagi discloses the required paddle
thickness. The Examiner concludes that claim 26 would have been obvious
under § 103. Id.
Regarding the recited paddle thickness, the Examiner finds that Yagi
shows the required thickness ratio in Figure 5. Final Act. 4--5. According to
the Examiner, Yagi half etches the chip paddles shown in the figures.
Ans. 17-18 (citing Yagi, Figs. 1, 4, 20E, 21E).
Regarding the recited angled leads, Appellants argue that there are no
bends in Shanna's leads and Nakamura does not half-etch any portion. See
App. Br. 15-17. In Appellants' view, these differences would have led one
of ordinary skill away from the claimed invention. Id. These arguments are
also directed to the rejection of claim 26. Id.
Furthermore, Appellants contend that Nakamura is different from
Sharma because Nakamura's leads and die pad are not coplanar. Id.;
Reply Br. 8-9. In Appellants' view, Sharma teaches away from non-
coplanar leads. App. Br. 16-17; Reply Br. 8-9.
Regarding the recited paddle thickness in claims 12 and 30,
Appellants reiterate the teaching-away arguments against the Sharma-Yagi
combination. App. Br. 15-16 (citing Sharma, col. 3, 11. 8-39); see also
Reply Br. 8-9. Furthermore, Appellants argue that the Examiner cannot rely
on Yagi's figures because Yagi does not disclose that the drawings are to
scale. App. Br. 17.
Issues
Has the Examiner established by a preponderance of the evidence that
I. Sharma and Nakamura collectively teach or suggest the
angled leads, as recited in claim 12?
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IL Sharma and Yagi collectively teach or suggest the thickness
range, as recited in claims 12-25 and 30?
Analysis
I.
Appellants' arguments regarding bends in Shanna's leads and
Nakamura's lack of half-etching (see App. Br. 15-17) are not persuasive for
the reasons discussed previously in connection with claim 26.
Furthermore, we are unpersuaded by Appellants' argument that
Sharma teaches away from non-coplanar structures and bending leads
(id. at 16-17). Shanna's stated preference for coplanar structures and
unbent leads does not disparage or discredit alternatives in a way that is
sufficient to teach away from the claimed invention. See DePuy Spine, 567
F.3d at 1327. As discussed above, Sharma's coplanar structure confers
advantages and disadvantages that would not have disparaged one of
ordinary skill from pursuing known alternatives. See, e.g., Sharma, col. 5, 11.
36-39; id. col. 3, 11. 42--44.
II.
We are also unpersuaded by Appellants' teaching-away arguments
against the Sharma-Yagi combination. App. Br. 15-16 (citing Sharma,
col. 3, 11. 8-39); see also Reply Br. 8-9. These arguments are similar to
those presented for claim 31. See App. Br. 12-13; see also Reply Br. 6-7.
Accordingly, we are not persuaded by these arguments for the reasons
discussed previously.
However, we are persuaded by Appellants argument that the
Examiner cannot rely on Yagi's figures to teach the claimed thickness range
of 25%-75% (App. Br. 17). As pointed out by Appellants (id.), a drawing's
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dimensions are not evidence of actual dimensions when the drawing are not
to scale. Hockerson-Halberstadt, Inc. v. Avia Group Int'! Inc., 222 F.3d
951, 956 (Fed. Cir. 2000); see also MPEP § 2125 (instructing Examiners
that a drawing's measurements are of little value when the reference is silent
about a feature's dimensions). Here, the Examiner has not shown that
Yagi's drawings are to scale such that the recited thickness range can be
ascertained solely from those figures as the Examiner seems to suggest. See
Final Act. 4--5; Ans. 16-18.
For this reason alone, we do not sustain the Examiner's rejection of
claim 12, or of claim 30, which also recites the range at issue. For this same
reason, we likewise do not sustain the rejections of dependent claims 13-25.
This is not the end of the inquiry, though. For the reasons set forth
below, setting the respective thicknesses so as to satisfy the recited range of
thicknesses would have been obvious. We, therefore, reject claims 12 and
30 under§ 103 as obvious over Sharma, Nakamura, and Yagi. We designate
this rejection as a new ground. In our rejection, we adopt the Examiner's
findings and reasoning in the rejections of claims 12 and 30 (Final Act. 3-5)
except for the reasoning related to the recited 25-75% paddle-to-lead-
thickness ratio range (see id. at 4--5).
Regarding this ratio range, though, Yagi does teach generally that the
paddle and the leads may be etched in various relative manners and that the
top surfaces of the leads and chip paddle do not have to be coplanar. 6 See
Yagi, Fig. 5 (showing paddle 24 to be etched relative to leads 22 such that
6 The "top surface" of Yagi's lead should not be confused with Yagi's
alternative "etched lead surface," as recited in claim 26. The etched lead
surface is the bottom, underside surface of the etched portion of the lead that
is disposed opposite to the lead's top surface.
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Application 11/947,505
the upper surface of superimposed chip 2 7 is approximately coplanar with
the top surface of the leads). Furthermore, Sharma teaches that leadframes
may be etched with a half-etch technique. Sharma, col. 3, 11. 37-39. By
definition, a half-etched paddle is approximately half the thickness of the
original leadframe material. Id. col. 4, 11. 20-23.
Sharma's additional teaching that a half-etch technique was a known
method for etching leadframes, when coupled with Yagi's not-necessarily-
to-scale drawings that at least depict a paddle etched relative to the leads,
renders claim 12 and 30 obvious. More specifically, the combined teachings
indicates that it would have been obvious to apply Sharma's half-etching
technique (id.) to arrive at Yagi's non-coplanar configuration (Yagi, Fig. 5),
thereby resulting in a chip paddle having a paddle-to-lead thickness ratio that
is approximately 50%-----well within the recited ratio range of 25%-75%.
Furthermore, it is well settled that "where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation." In re Aller, 220
F.2d 454, 456 (CCPA 1955). To be sure, a particular parameter first must be
recognized as a result-effective variable (i.e., a variable that achieves a
recognized result) before determining whether the variable's optimum or
workable ranges can be characterized as routine experimentation. See In re
Antonie, 559 F .2d 618, 620 (CCP A 1977). But here, the chip-to-paddle
thickness ratio is, in fact, a result-effective variable.
Specifically, it was merely a matter of common sense that if a paddle
were over-etched to too great an extent, the paddle could risk being
completely eliminated, or at least rendered unusable. Conversely, etching a
paddle too little would not serve the intended purpose of reducing the paddle
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Application 11/947,505
thickness. As such, any degree of etching between these two extremes of
etching too little and too much constitutes an optimization of a result-
effective variable. Therefore, it also would have been obvious to arrive at
the claimed ratio range of 25% to 75% by routine optimization.
For both of these reasons, the recited thickness ratio range would have
been obvious. We, therefore, reject claims 12 and 30 under§ 103 over
Sharma, Nakamura, and Yagi.
Although we decline to reject claims 13-25 under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean that the remaining claims are necessarily patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
26-29 under 35 U.S.C. § 103.
Appellant has shown that the Examiner erred in rejecting claims 12-
25, 30, and 31under35 U.S.C. § 103.
We newly reject claims 12, 30, and 31 as obvious under 35 U.S.C
§ 103(a).
DECISION
The Examiner's decision rejecting claims 12-31 is affirmed-in-part.
Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection
for claims 12, 30, and 31 under 35 U.S.C. § 103.
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Application 11/947,505
Section 37 C.F.R. § 41.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Furthermore, 3 7 C.F .R. § 41. 50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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