Ex Parte Lin et al

Patent Trial and Appeal Board

Dec 9, 2014

12758040 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHARLES W.C. LIN, CHIA-CHUNG WANG, and
SANGWHOO LIM
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Appeal 2012-011137
Application 12/758,0401
Technology Center 2800
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL2

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision rejecting claims 1–3, 6–17, and 19–45 for lack of adequate written

1 According to Appellants, the Real Party in Interest is Bridge
Semiconductor Corporation. (Br. 3.)
2 Our decision refers to Appellants’ Appeal Brief (Br.) filed January 25,
2012, the Examiner’s Answer (Ans.) mailed April 12, 2012, and Appellants’
Specification (Spec.).
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Application 12/758,040

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descriptive support in the original disclosure under 35 U.S.C. § 112, first
paragraph.3 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The invention relates to a semiconductor chip assembly with a
semiconductor device, a heat spreader, a conductive trace, and dual
adhesives. Spec. 2:4–6.
Each of the independent claims before us on appeal, claims 1, 16, and
31, includes a “wherein” clause reciting that the second adhesive “does not
overlap the semiconductor device.” The Examiner finds that Appellants’
Figures 6A and 6B show that “the semiconductor device 102 and the second
adhesive 56 are overlapped to each other.” Ans. 5. Therefore, the Examiner
finds that the above “wherein” clause lacks adequate written descriptive
support with regard to the recitation that the second adhesive “does not
overlap the semiconductor device.” Id.
Appellants dispute the Examiner’s finding that the claims lack
adequate written descriptive support for this recitation, noting that the
Specification defines the term “overlap” to mean “above and extending
within a periphery of an underlying element.” Br. 6 (citing to Spec. 46:15–
24.) The Examiner counters that, viewed from the top of the assembly of
Figure 6A, semiconductor device 102 overlaps adhesive 56, and viewed
from the bottom, adhesive 56 overlaps semiconductor device 102. Ans. 7.

3 The Examiner has withdrawn all prior art rejections over the claims. Ans.
4.
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Accordingly, the dispositive issue before us on appeal in this case is
whether the Examiner reversibly erred in finding Appellants’ Figure 6A
depicts that the second adhesive and the semiconductor device overlap each
other. We have considered the respective positions articulated by the
Examiner and Appellants, and find a preponderance of the evidence favors
Appellants.
“[The written description] inquiry is a factual one and must be
assessed on a case-by-case basis.” Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000). The Examiner “bears the initial
burden . . . of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Insofar as the written
description requirement is concerned, that burden is discharged by
“presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims.” . . . If . . . the specification
contains a description of the claimed invention, albeit not in
ipsis verbis (in the identical words), then the examiner . . . , in
order to meet the burden of proof, must provide reasons why
one of ordinary skill in the art would not consider the
description sufficient.
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
It is axiomatic that during examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification. In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An
applicant seeking a narrower construction must either show why the broader
construction is unreasonable or amend the claim to expressly state the scope
intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997). In our view,
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the Examiner’s interpretation of “the second adhesive . . . does not overlap
the semiconductor device” is unreasonable because it is inconsistent with
Appellants’ Specification as would be understood by one of ordinary skill in
the art. Appellants’ proffered interpretation, on the other hand, is consistent
with the Specification.
In this regard, we note that the Examiner focuses exclusively on
Figures 6A and 6B in support of the rejection. To be sure, one possible
definition of “overlap” is “to coincide in part with; have in common with.”4
However, in this application, Appellants defined the term “overlap” to
require that the overlapping structure be above and extend within the
periphery of the underlying structure. Br. 6. Therefore, the Examiner’s
interpretation of Figure 6A that shows the semiconductor device 102
overlaps adhesive 56 because the device is above the adhesive is consistent
with Appellants’ Specification. However, the Examiner’s interpretation that
Figure 6A shows the adhesive 56 overlaps the semiconductor device, when
viewed from the bottom, is not consistent with Appellants’ Specification
because the adhesive is below, not above, the device.
Accordingly, we will not sustain the Examiner’s rejection of claims
1–3, 6–17, and 19–45 as lacking written descriptive support under 35 U.S.C.
§ 112, first paragraph.

4 See http://dictionary.reference.com/browse/overlap, accessed on December
2, 2014.
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Application 12/758,040

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ORDER

Upon consideration of the record, and for the reasons given above and
in Appellants’ Appeal Brief, it is
ORDERED that the decision of the Examiner rejecting claims 1–3, 6–
17, and 19–45 under 35 U.S.C. § 112, first paragraph, for lack of adequate
written descriptive support in the original disclosure is reversed.

REVERSED

cdc