Ex Parte LI et al

Patent Trial and Appeal Board

Feb 29, 2016

13187730 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/187,730 07 /21/2011
22823 7590 02/29/2016
STEPHEN A GRATTON
THE LAW OFFICE OF STEVE GRATTON
2764 SOUTH BRAUN WAY
LAKEWOOD, CO 80228
FIRST NAMED INVENTOR
Jin Li
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.
2008-0600.01/US 6793
EXAMINER
PHAM, THANHHA S
ART UNIT PAPER NUMBER
2819
MAILDATE DELIVERY MODE
02/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIN LI and TONGBI JIANG
Appeal2014--004096
Application 13/187,730
Technology Center 2800
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 seek our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1-10. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a semiconductor component or
an electronic element including a semiconductor substrate having integrated
circuits and semiconductor devices (Specification, hereinafter "Spec" i-f 28).
1 The Appellants state that "Micron Technology, Inc." is the real party in
interest (Appeal Brief filed September 13, 2013, hereinafter "Br.," 3).
Appeal2014--004096
Application 13/187,730
Representative claim 1 is reproduced from page 16 of the Appeal Brief
(Claims App.), with key limitations at issue indicated in italicized text, as
follows:
1. A semiconductor component comprising:
a semiconductor substrate having a circuit side and
a thinned back side formed by a removed portion of the
semiconductor substrate;
a plurality of conductive vias in the semiconductor
substrate, each conductive via comprising a via lined
with a via insulator, and a metal filling the via;
a planarized polymer layer on the thinned back
side having a thickness equal to the removed portion of
the semiconductor substrate and a planarized polymer
surface;
a plurality of back side conductors self aligned to
the conductive vias comprising terminal portions of the
metal of the conductive vias having a height on the
thinned back side equal to the removed portion of the
semiconductor substrate and planarized contactors
planarized to the planarized polymer surface of the
planarized polymer layer, each back side conductor
comprising a terminal portion having a portion of the via
insulator of a conductive via thereon embedded in the
planarized polymer layer, and a planarized contactor
comprising a planarized surface of the metal of the
conductive via; and
a plurality of terminal contacts on the planarized
contactors.
THE REJECTIONS
The Examiner rejected the claims as follows:
I. Claim 1 under 35 U.S.C. § 103(a) as being unpatentable
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.l .. , .. /lL .l .. "'ltll>. ') .. over AKram et al. ~-·AKram--J;~ ana
II. Claims 1-10 under 35 U.S.C. § 103(a) as being
unpatentable over Farnworth et al. ("Famworth"). 3
(Examiner's Answer mailed December 18, 2013 at 2; Final Office Action
entered July 03, 2013, hereinafter "Final Act.," 2---6.)
DISCUSSION
We affirm these rejections for essentially the findings and reasons set
forth in the Examiner's Answer and the Final Office Action. Nevertheless,
we add the following comments primarily for emphasis.
I
The Examiner found that Akram describes a semiconductor
component including every limitation of claim 1 except for disclosing "a
thinned back side formed by a removed portion of the semiconductor
substrate," "a planarized polymer layer ... having a thickness equal to the
removed portion of the semiconductor substrate," and "terminal portions of
the metal of the conductive vias having a height on the thinned back side
equal to the removed portion of the semiconductor substrate" in the manner
as recited by the claim (Final Act. 2-3).
The Examiner determined the limitation "thinned back side formed by
a removed portion of the semiconductor substrate" is a process limitation
within a product claim and concluded this limitation "does not carry weight
in a claim drawn to structure because distinct structure is not necessarily
2 US 2007/0257373Al, published November 8, 2007.
3 US 2006/0275949 Al, published December 7, 2006.
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Application 13/187,730
produced" (id. at 2) (italics omitted). With respect to the thickness of the
polymer layer and the height of the terminal portions of the conductive vias,
the Examiner concluded both the thickness and height as claimed "would
have been obvious to an ordinary skilled artisan practicing the invention
because, absent evidence of disclosure of criticality for the range giving
unexpected results, it is not inventive to discover optimal or workable ranges
by routine experimentation" (id. at 3).
The Appellants argue, citing In re Garnero, 412 F.2d 276, 279 (CCPA
1979), "that if 'etched' and 'ground in place' can be construed as structural
limitations then 'thinned back side' and 'removed portion of the
semiconductor substrate' would also be structural limitations" (Br. at 10).
The Appellants contend the limitations "thinned back side" and "removed
portion of semiconductor substrate" necessarily "impart[] distinctive
structural characteristics to the product such as a reduced thickness and
weight" and thus Appellants argue these process limitations should be
considered "structural limitations" (Br. at 11 ). The Appellants further
contend the relationships between the "removed portion of the
semiconductor substrate" with both the thickness of the polymer layer and
the height of the terminal portions of the conductive vias create "distinctive
structural characteristics" (id. at 11-12). The Appellants argue Akram "does
not remove any portion of the substrate" and thus fails to meet the required
limitations of claim 1 (id. at 12).
We have fully considered the Appellants' arguments; however, these
arguments do not reveal any reversible error in the Examiner's factual
findings, analysis, and conclusion of obviousness. As found by the
Examiner (Final Act. at 2), Akram discloses a semiconductor substrate 8
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Application 13/187,730
having a back side (bottom) (Fig. 23; i1i127-55, 61). Although Akram does
not disclose removing a portion of the substrate from its back side, the
Appellants do not direct us to evidence or persuasive technical reasoning
explaining why a semiconductor substrate with a portion of its back side
removed to result in a thinned substrate of a particular thickness and weight
correlated to the other disputed limitations of claim 1 necessarily differs in
"structural characteristics" from a semiconductor substrate of the same
material that has not been thinned but has the same thickness and weight.
Given these findings, we fully agree with the Examiner that the substrate
structure of Akram appears to be the same or substantially the same as the
semiconductor substrate structure recited in claim 1. Where the Examiner
established a reasonable basis to believe that the prior art product is identical
or substantially the same as that which would result from following the
process limitation "thinned backside formed by a removed portion of the
semiconductor substrate," the burden shifted to the Appellants to prove that
the prior art products do not necessarily or inherently possess the
characteristics of the claimed product. In re Thorpe, 777 F.2d 695, 697 (Fed
Cir. 1985). Mere attorney argument to the contrary failed to satisfy that
burden. See, e.g., In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Contrary to the Appellants' belief, claim 1 does not contain any
meaningful limitations in terms of a quantifiable thickness and/or weight of
the product that would serve to define over the structure disclosed in Akram.
Here, we find the alleged "distinctive structural characteristics" appear to be
obtainable by other methods not specifically recited in the claim, including
merely selecting a substrate that has a weight and thickness equal to those of
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a substrate obtained according to the Appellants' specified thinning or
removal process. Thus, we hold that the evidence on the record does not
support the position that "distinctive structural characteristics" result from
the claimed process steps. Under these circumstances, we discern no error
in the Examiner's determination that the "semiconductor substrate having a
circuit side and a thinned back side formed by a removed portion of the
semiconductor substrate," as specified in claim 1, is indistinguishable from
semiconductor substrate 8 as shown in Akram's Figure 23.
To reiterate, we do not find the Appellants' arguments regarding the
relationship of the product-by-process limitation with the other disputed
limitations (i.e., thickness of the polymer layer and the height of the terminal
portion of the conductive vias) reveal any reversible error in the Examiner's
factual findings, analysis, and conclusion of obviousness. A person of
ordinary skill in the art would have drawn a reasonable inference4 from
Akram that the disclosed polymer layer (passivation layer 64) will have a
thickness and the terminal portion of the conductive vias (parts of
conductive material 54 protruding from the back or bottom side of the
substrate 8) will have a height comparable to that of the polymer layer
thickness (Fig. 23; i-fi-182, 89). 5 In view of the level of one ordinary skill in
4 In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.").
5 Although drawings in a patent application are not necessarily prepared to
scale, a person of ordinary skill in the art would have considered it for what
it discloses or suggests. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972);
In re Seid, 161F.2d229, 231(CCPA1947); In re Wagner, 63 F.2d 987,
986-87 (CCPA 1933).
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the art and the Appellants' failure to proffer evidence or persuasive
arguments contradicting the Examiner's specific findings, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to determine the optimum or workable thicknesses and heights, including
those encompassed by claim 1, through routine experimentation. See In re
Aller, 220 F.2d 454 (CCPA 1955). That some experimentation may have
been necessary to determine the suitable heights and thicknesses as claimed
has not been shown to require anything more than the ordinary skill in the
art. In this regard, the Appellants do not direct us to any evidence of
unexpected criticality or results.
Therefore, we find no merit in the Appellants' argument that Akram
does not recognize "the correlation ... between the 'removed portion of the
semiconductor substrate' to 'the thickness of the polymer layer' and 'the
height of the terminal portions"' and the conclusion that "the functional
differences produced by the above outlined structural characteristics do not
result from changes in ranges, but rather from a different structure" (Br. 13).
As discussed supra, we have held there is insufficient evidence to support
the position that the "removed portion of the semiconductor substrate"
imparts distinctive structural characteristics. In view of this determination,
we find the structure as outlined by claim 1 lacks the argued correlations and
requires only that the polymer layer to have a height equal to that of the
terminal portions of the metal of the conductive vias, which would have
been suggested by Akram. Therefore, we find the Appellants' arguments
unconvincing because the Appellants' product claim lacks the required
correlation as specifically argued. Moreover, as discussed supra, the
determination of the optimum or workable polymer thicknesses and terminal
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portion heights would have been obvious to one of ordinary skill in the art
through routine experimentation. In so holding, we emphasize the record is
deficient of objective factual evidence to the contrary.
The Appellants also argue Akram fails to disclose "each back side
conductor comprising a terminal portion having a portion of the via insulator
of a conductive via thereon" (Br. 13). As found by the Examiner (Final Act.
3), Akram discloses conductors protruding from the surface of the substrate,
resulting in a terminal portion of the back side conductor having a portion of
the via insulator (Figure 23; part of element 54). During patent examination,
the pending claims must be "given the broadest reasonable interpretation
consistent with the specification" by giving words their plain meaning unless
the specification provides a clear definition. See In re Prater, 415 F .2d
1393, 1404 (CCPA 1969) andin re Zletz 893 F.2d 319, 321 (Fed. Cir. 1989).
Therefore, we find that the Examiner has provided sufficient technical
reasoning with some rational underpinning that the Appellants' claimed
product and the product of the prior art reasonably appear to be the same and
the Appellants have proffered insufficient factual evidence to prove
otherwise. See In re Fessman, 489 F.2d 742, 744 (CCPA 1974) (Once the
PTO has made out a prima facie case that the appellant's claimed product
and the product of the prior art reasonably appear to be the same, the burden
shifts to the appellant to prove otherwise).
II
In arguing for the reversal of Rejection II, the Appellant argues
independent claims 1 and 6 together, focusing only on claim 1, and argues
dependent claims 2-5 and 7-10 for the same reasons as set forth with respect
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to the independent claims (Br. 14-15). Therefore, consistent with 3 7 C.F .R.
§ 41.37(c)(l)(iv), we confine our discussion to representative claim 1.
Like Akram, discussed supra, the Examiner found Farnworth
describes, or would have suggested on one of ordinary skill in the art, a
semiconductor component including every limitation of claim 1 except for
disclosing the "thinned back side formed by a removed portion of the
semiconductor substrate", the "a planarized polymer layer ... having a
thickness equal to the removed portion of the semiconductor substrate," and
"terminal portions of the metal of the conductive vias having a height on the
thinned back side equal to the removed portion of the semiconductor
substrate" in the manner as recited by the claim (Final Act. at 3-4).
The Examiner determined the limitation "thinned back side formed by
a removed portion of the semiconductor substrate" is a process limitation
within a product claim and concluded this limitation "does not carry weight
in a claim drawn to structure because distinct structure is not necessarily
produced" (id. at 3). With respect to the thickness of the polymer layer and
the height of the terminal portions of the conductive vias, the Examiner
concluded both the thickness and height as claimed "would have been
obvious to an ordinary skilled artisan practicing the invention because,
absent evidence of disclosure of criticality for the range giving unexpected
results, it is not inventive to discover optimal or workable ranges by routine
experimentation" (id. at 4).
The Appellants again argue that the Examiner's position that "a
thinned back side formed by a removed portion of the semiconductor
substrate" does not impart distinct structure "is contrary to MPEP 2113 and
the case law" (Br. at 14). Based on the similar issues raised by Famworth's
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teachings, we have sufficiently addressed this argument above and reject this
position for substantially the same reasons. In view of the Examiner's
findings (Final Act. 3--4 ), which we adopt as our own, we find the Examiner
has provided sufficient technical rationale that the Appellants' claimed
product and the product of the prior art reasonably appear to be the same and
the Appellants have proffered insufficient factual evidence to prove
otherwise. See Fessman, 489 F.2d at 744.
We also have considered the Appellants' arguments regarding the
thickness of the polymer layer and the height of the terminal portion of the
conductive vias and the associated correlation with the removed portion of
the substrate; however, again we find these arguments do not reveal any
reversible error in the Examiner's factual findings, analysis, and conclusion
of obviousness for the same or similar reasons as set forth previously.
The Appellants further contend the Examiner has not established "a
clear articulation of the reasons why the claimed invention would have been
obvious" because "citing all two hundred ninety nine paragraph of a
reference ... does not clearly articulate the rejections" (Br. at 15).
Notwithstanding the citation to multiple paragraphs of the reference, we find
the record sufficiently clear to reasonably articulate the reasons of
obviousness and thus are unpersuaded by this argument. The Examiner
identified a figure (Fig. 1 lF) and discussed the specific elements including a
semiconductor substrate, conductive vias 68A-F, protruding conductive
metal portions 70A-F, and polymer layers 38AP-F (Final Act. 3--4).
Therefore, sufficient notice of rejection under 35 U.S.C. § 132 was given to
the Appellants.
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The Appellants contend Farnworth "does not disclose the limitation of
'back side conductors self aligned to the conductive vias '" (Br. at 15). In
support of this contention, the Appellants argue "self alignment occurs
because ... the terminal portions ... are part of the conductive vias" (id.).
As found by the Examiner (Ans. 3), the backside conductors (70A-F) appear
to be sufficiently self-aligned with the conductive vias (68A-F) to meet the
claim limitation as drafted (Fig. 1 lF). Therefore, we reject this argument as
unpersuasive. We find the Examiner has found this limitation at issue is
disclosed or suggested in the prior art reference, and the Appellants' mere
assertions to the contrary are insufficient to identify a reversible error. See
Ex parte Belinne, No 2009-004693, 2009 WL 2477843 (BPAI 2009)
(informative) ("[W]e find that the Examiner has made extensive specific fact
finding ... with respect to each of the argued claims. Appellants' argument
... repeatedly restates elements of the claim language and simply argues
that the elements are missing from the reference. However, Appellants do
not present any arguments to explain why the Examiner's explicit fact
finding is in error"). See also 37 C.F.R. § 41.37(c)(l)(vii) (nothing that an
argument that merely points out what a claim recites is unpersuasive).
Additionally, we are unpersuaded by the argument that "self alignment"
requires the terminal portions to be part of the conductive vias because such
a requirement is not found in the claims as drafted. See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) (The "name of the game is the claim"
and unclaimed features cannot impart patentability to claims). See also In re
Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from
the outset because ... they are not based on limitations appearing in the
claims.").
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survnvIARY
For these reasons and those set forth in the answer, Rejections I and II
are affirmed. Therefore, the Examiner's final decision to reject claims 1-10
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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