Ex Parte Mahler et al

Patent Trial and Appeal Board

Sep 28, 2017

12195200 (P.T.A.B. Sep. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/195,200 08/20/2008 Joachim Mahler I560.224.101/2008P50933US 8042
25281 7590 10/02/2017
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
MAI, ANH D
ART UNIT PAPER NUMBER
2829
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
USPTO.PATENTS @dbclaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM MAHLER,
MICHAEL JUERSS,
and STEFAN LANDAU
Appeal 2017-003147
Application 12/195,200
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants1 filed an appeal under 35 U.S.C. § 134(a) from an
Examiner’s decision finally rejecting claims 1-3, 5,21, and 22 under
35 U.S.C. § 103(a) as unpatentable over Choi2 in view of Featherby et al.3
Claims 6-20 are also pending but have been withdrawn from consideration.
We have jurisdiction under 35 U.S.C. § 6(b).
1 According to the Appellants, Infineon Technologies AG is the real party in
interest. Appeal Brief dated June 27, 2016 (“App. Br.”).
2 US 6,013,109, issued January 11, 2000.
3 US 6,368,899 Bl, issued April 9, 2002.
Appeal 2017-003147
Application 12/195,200
We REVERSE.
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief. The limitation at issue is italicized.
1. A semiconductor device comprising:
a carrier;
a chip attached to the carrier;
an amorphous carbon sealant layer deposited directly in
contact with and over the chip and the carrier to form a sealed
chip and a sealed carrier; and
encapsulation material deposited over the sealed chip and
the sealed carrier, wherein the amorphous carbon sealant layer
is in direct contact with both the encapsulation material and the
chip and carrier, and wherein the encapsulation material forms
an exterior surface of the semiconductor device.
App. Br. 11 (emphasis added).
B. DISCUSSION
The Examiner finds Choi discloses a semiconductor device
comprising, inter alia, carbon sealant layer 26 in direct contact with
encapsulation material 29, chip 23, and carrier 21. Final Act. 34; see also
Choi Fig. 3D. The Examiner, however, finds that carbon sealant layer 26 is
not an amorphous carbon sealant layer as recited in claim l.5 Final Act. 3.
The Examiner finds Featherby discloses a semiconductor device
comprising an amorphous carbon sealant layer (i.e., first layer 300) and
concludes that it would have been obvious to replace Choi’s carbon sealant
4 Final Office Action dated January 12, 2016.
5 Choi discloses that layer 26 may be a polyimide, an epoxy, or PTFE
material such as Teflon™. Choi, col. 3,11. 45^46.
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Appeal 2017-003147
Application 12/195,200
layer with the amorphous carbon sealant layer (i.e., first layer 300) disclosed
in Featherby. Final Act. 3.
There is no dispute on this record that Featherby’s first layer 300 is
one of two layers of a duplex coating comprising first layer 300 and second
layer 400, whereby second layer 400 is a protective layer that protects the
more brittle first layer 300 during handling and manufacture. Featherby,
col. 10,11. 37-45; see also Ans. 6 (finding that “layer 300 and 400 of
Featherby are used a[s] part of the duplex layer”);6 App. Br. 6—7 (contending
that layer 300 must be used in conjunction with second layer 400 as part of a
duplex coating). Thus, based on the teachings of Featherby, Choi’s layer 26
must be replaced with first layer 300 and second layer 400 in the
modification proposed by the Examiner. App. Br. 7.
There is also no dispute on this record that first layer 300 and second
layer 400 need not be in direct contact with each other. App. Br. 7; see also
Featherby, col. 11,11. 29—30 (“All that is needed is for the second layer to
envelope the first layer.”). Nonetheless, the Appellants argue that “[t]he
mold material 29 of Choi, as modified in view of Featherby, cannot form an
exterior surface of the device while simultaneously being in direct contact
with the amorphous carbon layer 300” as recited in claim 1. App. Br. 8
(emphasis omitted).
More specifically, the Appellants argue:
In a first instance, if the person of ordinary skill in the art
replaces film 26 of Choi with the duplex coating of Featherby
and chooses to dispose the mold material 29 so as to be in direct
contact with the diamond-like amorphous carbon layer 300 (i.e.
the mold material 29 is interposed between diamond-like
6 Examiner’s Answer dated November 3, 2016.
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Application 12/195,200
amorphous carbon layer 300 and second layer 400), in order for
second layer 400 to envelop diamond-like amorphous carbon
layer 300, the second layer 400 must necessarily also envelop
the mold material 29. In such case, since the second layer 400
is required to envelop mold material 29, the mold material 29
cannot form an exterior surface of the semiconductor device as
defined by independent claim 1.
Likewise, in a second instance, if the mold material 29 of
Choi is disposed so as to form an exterior surface of the
semiconductor device, in order for the second layer 400 to
envelop the diamond-like amorphous carbon layer 300, the
second layer 400 must be disposed between the mold material
29 and the diamond-like amorphous carbon layer 300. In such
case, since the second layer 400 is disposed between mold
material 29 and the diamond-like amorphous carbon layer 300,
the mold material 29 cannot be in direct contact with diamond­
like amorphous carbon layer 300, as defined by independent
claim 1.
App. Br. 8 (emphasis omitted).
In response, the Examiner directs our attention to Featherby Figure 12
and finds “the first layer 300 of Featherby is an equivalent to layer 26 of
Choi; and layer 400 of Featherby is equivalent to the encapsulation material
29 of Choi.” Ans. 6. Thus, the Examiner finds Featherby Figure 12 teaches
replacing Choi’s encapsulation material 29 with Featherby’s layer 400 and
replacing Choi’s sealant layer 26 with Featherby’s layer 300, whereby the
encapsulation material (i.e., layer 400) forms an exterior surface of Choi’s
device and is in direct contact with the amorphous carbon sealant layer (i.e.,
layer 300) as recited in claim 1. Ans. 7.
The Appellants argue that Featherby Figure 12 teaches that first layer
300 and second layer 400 are in addition to a molding material (e.g.,
Featherby’s molding material 12 or Choi’s encapsulation material 29).
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Application 12/195,200
Reply Br. 6.7 For support, the Appellants rely on column 12, lines 60-63 of
Featherby. ReplyBr. 5—6.
The Appellants’ argument is supported by the record. Featherby
discloses:
FIG. 12 is a perspective view, partially in cross section,
of a variation of a plastic package device showing a
die/wire/lead structure with an inorganic coating [300]
encapsulating the die/wire/lead structure, with an organic
coating [400] applied thereover, such as in FIG. 4, and further
showing the die/wire/lead structure packaged within a plastic
package, such as in FIG. 5, forming a die/substrate/wire/lead
package structure, the die/substrate/wire/lead/package structure
being shown with another inorganic coating [300]
encapsulating the die/substrate/wire/lead/package structure and
another organic coating [400] applied over the other inorganic
coating, such as in FIG. 8.
Featherby, col. 4,11. 10-21 (emphasis added); see also Featherby Fig. 12
(showing plastic package 12 under first layer 300 and second layer 400).
In sum, we find that Featherby Figure 12 does not teach or suggest
that second layer 400 is equivalent to a molding material, such as
Featherby’s molding material 12 or Choi’s encapsulation material 29.
Therefore, the modification proposed by the Examiner, i.e., replacing Choi’s
encapsulation material 29 with Featherby’s second layer 400, is not
supported by the record.
The § 103(a) rejection on appeal is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
7 Reply Brief dated December 22, 2016.
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