Ex Parte Low et al

Board of Patent Appeals and Interferences

Apr 30, 2008

10384892 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte QWAI H. LOW, RAMASWAMY RANGANATHAN, MANIAM
ALAGARATNAM and CHOK J. CHIA
____________

Appeal 2007-3946
Application 10/384,892
Technology Center 2800
____________

Decided: April 30, 2008
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appeal 2007-3946
Application 10/384,892

Appellants invented a wire bonding assembly having a die connected
to a package substrate. The die has an inner portion with active circuitry.
Bond pads are located along the perimeter and inner portion of the die and
among the active circuitry. Wires connect the bond pads to leads on the
package substrate. This arrangement reduces the required die area, increases
the die’s padding density, and reduces the cost to form the die.1
Claim 1 is illustrative:
1. A wire bond assembly comprising:

a die having a top surface which includes a perimeter portion,
an inner portion having active circuitry thereon, and

a plurality of bond pads located in said perimeter portion and in
said inner portion of said top surface among said active circuitry,
among cells, transistors and circuitry;

a package substrate, said die having a bottom surface opposite
the top surface, said bottom surface contacting said package
substrate, wherein said die has active circuitry on the top surface
among bond pads;

a plurality of leads on said package substrate; and

a plurality of wires connecting certain of said bond pads to
certain of said leads.

The Examiner relies on the following prior art references to show
unpatentability:
Horiuchi US 6,084,295 Jul. 4, 2000

Miyamoto US 6,720,591 B2 Apr. 13, 2004
(filed Apr. 23, 2002)

1 See generally Spec. 4:1-9 and 6:7-7:13.
2
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Application 10/384,892

Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horiuchi and Miyamoto.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief2 and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, the U. S. Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless

2 We refer to the most recent Appeal Brief filed November 25, 2005,
throughout this opinion.
3 We refer to the Examiner’s Answer mailed February 24, 2006 throughout,
this opinion.
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Application 10/384,892

its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007). If the claimed
subject matter cannot be fairly characterized as involving the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
of obviousness can be based on a showing that “there was an apparent
reason to combine the known elements in the fashion claimed.” Id. at 1740-
41. Such a showing requires “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. . . . [H]owever,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. at 1741.
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Regarding representative claim 1,4 the Examiner indicates that
Horiuchi discloses all the claim limitations except for the bond pads being
located “among cells, transistors and circuitry” as recited. The Examiner

4 Appellants argue claims 1-19 as a group (App. Br. 4-6). Accordingly, we
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 10/384,892

finds the bond pads are located in the inner portion of the top surface among
the active circuitry and states that it is well known to have active circuitry in
the die of Horiuchi. The Examiner, however, relies on Miyamoto to teach
the circuitry details of a die and finds it is well known for the active circuitry
to include cells and transistors in order to obtain an application-specific chip
package. The Examiner concludes that one skilled in the art would have
included cells and transistors among the active circuitry of Horiuchi’s die, as
taught by Miyamoto, so as to obtain a specific chip package (Ans. 3-4).
Appellants argue the Examiner relies on hindsight to meet the
limitations of claim 1 (App. Br. 5). Specifically, Appellants argue the
disclosure in Horiuchi of the bond pads being in an “area-array” does not
mean the bond pads are among active circuitry (App. Br. 4). Appellants,
additionally, dispute that the active circuitry of Horiuchi is on a top surface
(App. Br. 5).
The issue before us, then, is whether the cited prior art reasonably
teaches or suggests the plurality of bond pads located on the top surface of
the die among active circuitry and among the cells, transistors and circuitry.
For the following reasons, we find they do.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Concerning the term “among”
in the claim, the Specification discusses a preference to have the bond pads
dispersed among active circuitry or to be among the cells, transistors and
circuitry of the device “as opposed to being provided merely along the
peripheral edge such as among metallization or bare silicon areas which do
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Application 10/384,892

not have any transistors or metal circuitry” (Spec. 7:-12). There is, however,
no special definition for the term in the Specification, and Appellants have
not provided any evidence that the term has a particular meaning to those of
ordinary skill in the art. Given that the term has no special meaning or
understanding with those skilled in the art, “the words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted).
The Merriam-Webster’s Online Dictionary defines “among” as “in
company or association with[.]” Merriam-Webster's Online Dictionary, 10th
ed., http://www.merriam-webster.com/cgi-
bin/dictionary?book=Dictionary&va=among (last visited Apr. 8, 2008). We,
therefore find the phrase “a plurality of bond pads located . . . in said inner
portion of said top surface among said active circuitry, among cells,
transistors and circuitry” to require the bond pads to be located on the top
surface in the company of the active circuitry and in the company of the
cells, transistors and circuitry. We also find the phrase, “said die has active
circuitry on the top surface among the bond pads” to require the active
circuitry to be on the top surface of the die in the company of the bond pads.
Given these interpretations of the above-recited language, we turn to the
prior art.
Horiuchi discloses a wire bond assembly having a semiconductor chip
(die) 10 with a top surface and a bottom surface contacting a package
substrate 5 (Horiuchi, col. 3, ll. 30-31; Fig. 1). The die of Horiuchi has a top
surface with a perimeter and inner portion, and bond pads or electrode
terminals located on the die in an area-array (Horiuchi, col. 3, ll. 41-42 and
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Application 10/384,892

col. 7, ll. 41-46; Fig. 1). Similar to the area-array in Figures 8 and 9 of
Horiuchi, which show the pattern of the conductor portions on the substrate,
the area-array pattern of the bond pads on the die of Horiuchi will cover the
perimeter and inner portion of the top surface of the die (Horiuchi, Figs. 1, 8
and 9). While the circuitry details of Horiuchi’s die are not shown, the die
must include active circuitry to perform its role as a semiconductor device.
Horiuchi also discloses a plurality of leads 22 on the package substrate and a
plurality of wires 20 connecting the bond pads located on the die to the leads
(Horiuchi, col. 3, ll. 41-47; Fig. 1).
Miyamoto teaches known circuitry details by those skilled in the art of
an application-specific die (Miyamoto, col. 9, l. 47 – col. 10, l. 50; Fig. 5).
As shown in Figure 5, this die contains active circuitry (e.g., 80-82), cells
(e.g., 72-74), transistors (e.g., 64-66) and circuitry (e.g., 69, 78, 84)
(Miyamoto, col. 9, l. 55 - col. 10, l. 38; Fig. 5). The bond pads (BP) of
Miyamoto are disclosed as part of the uppermost wiring designated by
reference numeral 4 (Miyamoto, col. 9, ll. 18-24; Figs. 4 and 5).
In our view, the collective teachings of Horiuchi and Miyamoto
provide a rationale for combining known elements such that the plurality of
bond pads are located in the perimeter and inner portions “of said top surface
among said active circuitry, among cells, transistors and circuitry” and “said
die has active circuitry on the top surface among bond pads” as recited in
claim 1. Miyamoto provides the necessary teaching to demonstrate
commonly known features of a die, including cells, transistors, and circuitry,
used by those skilled in the art to build an application-specific die
(Miyamoto, col. 9, l. 18 - col. 10, l. 38; Fig. 5). One skilled in the art would
have, therefore, recognized that the components of known dies, such as the
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Application 10/384,892

cells, transistors, and circuitry shown in Miyamoto, can be integrated with
Horiuchi to yield a predictable application-specific integrated chip.
Furthermore, and consistent with the Specification’s description that
the bond pads are dispersed in areas with metal circuitry (Spec. 7:8-12),
Miyamoto shows that such a predictable arrangement would have the bond
pads located on the top surface in the company of or among the active
circuitry (e.g., 80-82) as claimed (Miyamoto, Figs. 4-5). We acknowledge
that the bond pads and the active circuitry may not be at the uppermost
surface or at precisely the same part of the top surface. However, giving the
phrase “on the top surface” its broadest reasonable interpretation consistent
with the Specification, the top surface includes portions below the
uppermost surface. Also, giving the term “among” its broadest reasonable
interpretation consistent with the Specification, the bond pads of Miyamoto
are also located in the company of cells (e.g., 72-74), transistors (e.g., 64-
66), and circuitry (e.g., 69, 78, 84) (Miyamoto, Figs. 4 and 5). We, thus,
find that Miyamoto teaches the bond pads are located on the top surface of
the die among active circuitry and among the cells, transistors, and circuitry.
While Appellants’ arguments focus on Horuichi (App. Br. 4-5), the
Examiner clarifies that the prima facie case of obviousness relies on the
combined teachings of Horiuchi and Miyamoto and not Horiuchi alone to
meet the limitation of “among said active circuitry, among cells, transistors
and circuitry” (Ans. 8). We agree. Horiuchi is silent regarding the circuitry
of the die and whether the bond pads are located among active circuitry, the
cells, transistors and circuitry as claimed. To teach the above limitation, we
rely on Miyamoto and the above-stated rationale for combining its teachings
with Horiuchi.
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Application 10/384,892

We also find Appellants’ comment regarding the die in Horiuchi
being inverted5 unpersuasive in rebutting the prima facie case of
obviousness. First, claim 1 does not specifically recite the orientation of the
die. Second, even though the die is inverted, Horiuchi discloses in Figure 1
the bond pads are on the top surface as claimed. Miyamoto, as explained
previously, also discloses the bond pads and the active circuitry on the top
surface of the die. Moreover, as previously discussed, Miyamoto discloses
the bond pads are in the top surface in the company of the active circuitry
and in the company of or among the cells, transistors and circuitry
(Miyamoto, Figs. 4-5). Thus, regardless of the orientation of Horiuchi’s die,
we find the references in combination teach the limitations of claim 1.
For the foregoing reasons, Appellants have not shown error in the
Examiner’s obviousness rejection of representative claim 1 based on the
collective teachings of Horiuchi and Miyamoto. Accordingly, we sustain the
rejection of claim 1 and claims 2-19, which fall with claim 1.

DECISION
We have sustained the Examiner’s rejection with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-19 is
affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

5 See App. Br. 5.
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Appeal 2007-3946
Application 10/384,892

AFFIRMED

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