Ex Parte Luechinger

Board of Patent Appeals and Interferences

May 28, 2008

10429128 (B.P.A.I. May. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPH B. LUECHINGER
____________

Appeal 2007-3981
Application 10/429,128
Technology Center 2800
____________

Decided: May 28, 2008
____________

Before ANITA PELLMAN GROSS, SCOTT R. BOALICK,
and JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-3, 6, 7 and 13-18. Claims 4, 5, 8-12 and 19-48 have
been withdrawn from consideration.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse. However, we also enter a new ground of rejection
under 37 C.F.R. § 41.50(b).

1 See Final Office Action, mailed April 5, 2005.
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STATEMENT OF THE CASE
Appellant invented a semiconductor package that connects a
semiconductor die to a lead frame. The package includes a conductive
terminal and an electronic device or die having a metallic portion. A
conductive ribbon is ultrasonically bonded to the metallic portion and
bonded to the conductive terminal. This arrangement reduces the number of
connections needed, increases the production rate, and reduces the
manufacturing costs.2 Claim 1 is illustrative:
1. An electronic package, comprising:

an electronic device having a conductive upper surface;

a conductive terminal external to the electronic device; and

a conductive ribbon ultrasonically bonded to a first portion of
the conductive upper surface and bonded to the conductive terminal.

The Examiner relies on the following prior art reference to show
unpatentability:
Appellant’s admitted prior art (“AAPA”) in Figures 1 and 2 and on pages 1
and 2 of the present application.
The Examiner’s rejections are as follows:
1. Claims 1-3, 6, 7, 13, 17 and 18 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by the AAPA.
2. Claims 14-16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the AAPA.

2 See generally Spec. 1:9-12, 5:12-25, 8:22-9:1, and 10:25-27.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief3 and the Answer4 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant 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
The Anticipation Rejection
We first consider the Examiner’s rejection of claims 1-3, 6, 7, 13, 17
and 18 under 35 U.S.C. § 102(a) as being anticipated by the AAPA. “A
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d 628,
631 (Fed. Cir. 1987).
Regarding the sole independent claim 1, the Examiner has indicated
how the claimed invention is deemed to be fully met by the AAPA. The
Examiner states the conductive wire in Figure 1 and the strap in Figure 2 are
both conductive ribbons as recited (Ans. 3). Appellant disagrees. In
particular, Appellant argues that there are structural differences between the
disclosed wire, which has diameter, and the claimed ribbon, which is
rectangular in cross-section (Br. 4, 6, and 11-13). Appellant also contends
that the conductive strap in Figure 2 of the AAPA is not ultrasonically

3 We refer to the Appeal Brief filed September 27, 2005, throughout this
opinion.
4 We refer to the Examiner’s Answer mailed May 17, 2006, throughout this
opinion.
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bonded to a first portion of the conductive upper surface as recited in the
claims (Br. 6 and 7).
The issue before us, then, is whether Figure 1 or 2 of the AAPA
discloses a conductive ribbon ultrasonically bonded to a first portion of the
conductive upper surface. For the following reasons, we find that neither
figure does.
“[T]he 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). A “ribbon” is defined as
“[a] narrow strip or band of fine fabric, such as satin or velvet, finished at
the edges and used for trimming, tying, or finishing” or “[s]omething, such
as a tape measure, that resembles a ribbon.”5 Also, during examination of a
patent application, a claim is given its “broadest reasonable interpretation” in
light of the specification and “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). The Specification does state that “[t]he ribbon is of a
rectangular cross-section” (Spec. 6:4-5). Thus, we take this statement in the
Specification as a definition of a “ribbon” and find that a ribbon is as a
narrow strip or band having a rectangular cross-section.
Figure 1 of the AAPA discloses a conductive wire (24) ultrasonically
bonded to a portion of the conductive surface (Spec. 2:4-11). Given that the
conductive wire has a diameter (Spec. 2:30-31), the cross-section is circular

5 The American Heritage Dictionary of the English Language, 4th ed.,
available at http://www.bartleby.com/61/98/R0229800.html (last visited
May 1, 2008).
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and not rectangular, as the conductive ribbon is defined. We, therefore, do
not find that Figure 1 of the AAPA anticipates claim 1.
Figure 2 of the AAPA also fails to meet the claim limitation of a
conductive ribbon ultrasonically bonded to a portion of the conductive upper
surface. Although not discussed by either the Examiner or Appellant, we
find that the recitation, “ultrasonically bonded,” is a product-by-process
limitation. In general, the patentability of product-by-process claims is
based on the product and not the method of production. In re Thorpe, 777
F.2d 695, 697 (Fed. Cir. 1985) (citations omitted). The structure implied by
the process steps, however, should be considered when assessing the
patentability of product-by-process claims over the prior art. See In re
Garnero, 412 F.2d 276, 279 (CCPA 1979). As such, the structure implied
by ultrasonically bonding the conductive ribbon to the first portion of the
conductive upper surface must be considered when assessing the
patentability of claim 1 over the AAPA.
The Specification states the conductive strap (50) is bonded to a
portion of the conductive upper surface (22) by solder or glue (Spec. 3:11-
13). While soldering, gluing, and ultrasonically bonding are all methods of
attaching a conductive component to the upper surface of the electronic
device, the structure implied by soldering or gluing the strap to the
conductive upper surface of the electronic device is different from the
structure implied from ultrasonic bonding. In ultrasonic bonding, there are
no soldering materials or adhesives necessary to bind the materials together.
We, therefore, do not find that Figure 2 of the AAPA anticipates claim 1.
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For the foregoing reasons, we will not sustain the Examiner’s
rejection of independent clam 1 or its dependent claims 2, 3, 6, 7, 13, 17 and
18.

The Obviousness Rejection
With regards to the obviousness rejection of claims 14-16, the
Examiner adds a discussion that the AAPA discloses a given width,
thickness, and aspect ratio of the conductive ribbon and that one skilled in
the art would know to arrive at the claimed ranges of width, thickness, and
aspect ratio of the ribbon through routine experimentation (Ans. 4-5). The
rejection fails to discuss or provide any rationale as to why the
above-discussed missing limitations of claim 1 are nonetheless obvious over
the AAPA. We, therefore, will not sustain the obviousness rejection of
claims 14-16.

New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 103 for claims 1-3, 6, 7, and 13-18.
The Board relies on the following additional prior art reference to
show unpatentability:
Cheah US 6,040,626 Mar. 21, 2000

Claims 1-3, 6, 7, and 13-18 are rejected under 35 U.S.C. 103(a) as
being obvious over the AAPA and Cheah. At the outset, we note that
Figures 1 and 2 of the AAPA have been labelled, “Prior Art.” We,
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therefore, find that Figures 1 and 2 and the discussion in the Specification
related to these figures are prior art.
Figure 1 of the AAPA discloses an electronic package comprising an
electric device (10) having a conductive upper surface (22), a conductive
terminal (14) external to the electronic device and a conductive wire (24)
ultrasonically bonded to a portion of the conductive surface and bonded to
the conductive terminal (Spec. 1:29-2:11). Figure 2 of the AAPA6 discloses
an alternative electronic package in the art (Spec. 3:4-11). This embodiment
includes a package comprising an electric device (10) having a conductive
upper surface (22), a conductive terminal (14) external to the electronic
device, and a conductive strap (50) bonded to a portion of the conductive
upper surface and to the conductive terminal (Spec. 3:4-17). While Figure 2
does not show the entire shape of the conductive strap, Cheah provides more
details (Cheah, col. 4, ll. 9-14 and Figs. 4b-c). Cheah also discloses the plate
portion 30 of the strap 28 is made from copper and has a dimension of about
0.108 x 0.104 mils (Cheah, col. 3, ll. 51-54 and col. 5, ll. 44-45).
In our view, the collective teachings of the AAPA and Cheah provide
a reason to combine known elements in the fashion set forth in claim 1. See
KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007). Figure 1 of the
AAPA has a conductive wire with a diameter (Spec. 2:30-31) rather than
having a rectangular cross-section. However, the discussion of Figure 2 of
the AAPA explains that the “[u]se of a strap provides the advantages of
reducing resistance to current flow by providing a large contact area for

6 The Specification states that the Figure 2 configuration is disclosed in
Cheah (U.S. 6,040,626, issued Mar. 21, 2000) (Spec. 3:5-8). Cheah
discloses the strap 28 has a plate portion 30 and a shaped beam portion 34
(Cheah, col. 3, ll. 50-55 and col. 4, ll. 1-4; Figs. 3-6).
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coupling metalized portion 22 to lead 14, e.g., spreading resistance is greatly
reduced” (Spec. 3:13-17). Thus, one skilled in the art would have
recognized that substituting the strap of Figure 2 for the wire in Figure 1
would improve the Figure 1 device in the same way of reducing resistance to
current flow by providing a larger contact area for coupling to the
conductive upper surface 22 of the electronic device 10 in Figure 1. One
skilled in the art would also appreciate that this substitution does no more
than yield the predictable result of reducing resistance to current flow by
providing a larger contact area. “[I]f 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 its actual application is beyond his or her skill.” KSR, 127 S.
Ct. at 1740. We, therefore, find that the substitution of the strap for the wire
in Figure 1 of the AAPA yields the predictable result of having a conductive
strap ultrasonically bonded to a first portion of the conductive upper surface
as recited in claim 1.
Figures 1 and 2 also describe and show various approaches to
attaching a conductive component to the conductive upper surface. The
Specification describes Figure 1 as a wire attached to the conductive upper
surface 22 of the electronic device 10 through ultrasonic bonding (Spec. 2:6-
8). The Specification describes Figure 2 as a conductive strap 50 attached to
the conductive upper surface 22 through soldering or gluing (Spec. 3:11-13).
When there is motivation:
to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has a good reason to
pursue the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
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innovation but of ordinary skill and common sense. In that instance
the fact that a combination was obvious to try might show that it was
obvious under § 103.

KSR, 127 S. Ct. at 1742. These embodiments demonstrate that there were a
finite number of known techniques for bonding a conductive component
securely to a conductive upper surface of a die. The skilled artisan would
have had good reason to try these techniques, including ultrasonic bonding,
with a reasonable expectation of success. Thus, we find that ultrasonically
bonding the strap in Figure 2 of the AAPA to the upper conductive surface
of an electronic device is “the product not of innovation but of ordinary skill
and common sense.” KSR, 127 S. Ct. at 1742.
Appellant argues that the recited conductive ribbon differs from the
strap 50 in Figure 2 (Br. 6-9). As stated previously, the description in the
Specification of a ribbon, which we have accepted as a definition thereof,
indicates that a ribbon is as a narrow strip or band having a rectangular
cross-section. Strap 50 of Figure 2 of the AAPA is disclosed as being made
from copper or is conductive (Cheah, col. 3, ll. 52-53). Strap 50 (plate 30 of
Cheah) also has the dimensions of about 0.108 x 0.104 mils or is a narrow
strip or band (Cheah, col. 5, ll. 44-45; Figs. 3, 4, 4b, 4c and 6). Cheah
further shows and discloses the strap 50 (plate 30 of Cheah) has a
rectangular cross-section (Cheah, col. 3, ll. 50-54 and col. 4, ll. 9-14; Figs. 3,
4, 4b, 4c, and 6). The strap 50 in Figure 2 of the AAPA is, therefore, a
conductive ribbon as recited in the claims.
Appellant also contends that the strap 50 in Figure 2 of the AAPA
differs from the recited ribbon because the strap is relatively stiff or more
rigid than the claimed ribbon (Br. 7-8). We disagree. First, arguments that
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the ribbon is flexible or of a particular thickness are not commensurate with
the scope of claim 1. Second, even if the ribbon must be “flexible,” we find
that the ribbon in the Specification and the strap in Figure 2 of the AAPA are
similar in this respect. The Specification discloses the ribbon can be made
from copper, have a thickness between two and twelve mil, and a width
between twenty and one hundred mil (Spec. 6:6 and 9:5-25). Cheah
similarly discloses the strap 50 includes a strip or plate 30 made from copper
and having the dimensions of about 0.108 x 0.104 mils (Cheah, col. 3, ll. 52-
54 and col. 5, ll. 44-45; Figs. 3, 4, 4b, 4c, and 6). Cheah does not explicitly
state to which dimensions (e.g., width, length, and thickness) these values
refer. Nevertheless, given that the shape of the plate in Figure 4 is
approximately rectangular, we presume these values correspond to the
plate’s width and length. We also recognize that Cheah discloses that
portion 30 is substantially thick (Cheah, col. 3, ll. 50-51). However, since
portion 30 is called a plate portion, we presume that the thickness is
substantially smaller than the width and length. Thus, the thickness of
Cheah’s plate is less than the thickness of the ribbon in the Specification
and, therefore, the flexibility should be no less than the disclosed ribbon.
Appellant also attempts to distinguish strap 50 from the ribbon by
indicating the strap is made from multiple layers (Br. 7). The Specification,
however, states that the ribbon can be made from a single layer or multiple
layers (Spec. 6:5-8).
For the reasons stated above, we find Figures 1 and 2 of the AAPA
provide ample rationale to combine their teachings to yield the electronic
package recited in claim 1.
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Since Appellant did not separately argue the patentability of any of
claims 2, 3, 6, 7 and 13-18, we will adopt the Examiner's findings (Ans. 3-5)
that these limitations are taught by the AAPA. Accordingly, those claims
are likewise unpatentable over the cited prior art for the reasons indicated in
the Answer.

DECISION
We have not sustained the Examiner’s rejection of any of the claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-3, 6, 7, and
13-18 is reversed. We have, however, entered a new ground of rejection
under 37 C.F.R. § 41.50(b) for independent claim 1 and dependent claims 2,
3, 6, 7, and 13-18.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection…
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) 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 that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

KIS

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