Ex Parte Malone et al

Board of Patent Appeals and Interferences

Jan 12, 2006

10028015 (B.P.A.I. Jan. 12, 2006)

1 Application for patent filed December 21, 2001 which claims the
filing priority benefit under 35 U.S.C. § 119 of the provisional Application
No. 60/258,993, filed December 29, 2000.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSHUA J. MALONE
and JEFFREY E. FARIS
____________
Appeal No. 2005-2711
Application No. 10/028,0151
____________
ON BRIEF
____________
Before JERRY SMITH, BARRETT and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-9. Claims 10-19 have been
withdrawn from consideration as drawn to a non-elected invention.
We affirm.
BACKGROUND
Appellants’ invention is directed generally to the placement
of an indicia on an integrated circuit package to indicate the
orientation of the package. Specifically, Appellants provide for
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an intermediate metallization layer on a lower portion of a
package to remain visible beyond the extent of an upper portion
of the package for indicating an orientation of the package. An
understanding of the invention can be derived from a reading of
exemplary independent claim 1, which is reproduced as follows:
1. A substrate for a device package comprising:
a lower portion of a package;
an intermediate metalization layer on a top surface of said
lower portion;
an upper portion of said package on said top surface of said
lower portion, a corner portion of said intermediate metalization
layer remaining visible beyond the extent of said upper portion
for indicating an orientation of said substrate.
The Examiner relies on the following references:
Guzuk et al. (Guzuk) 5,153,379 Oct. 6, 1992
Ueda et al. (Ueda) 6,037,698 Mar. 14, 2000
Claims 1 and 3-8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Guzuk.
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Ueda.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guzuk.
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Application No. 10/028,015
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Rather than reiterate the opposing arguments, reference is
made to the briefs and answer for the respective positions of
Appellants and the Examiner. Only those arguments actually made
by Appellants have been considered in this decision. Arguments
which Appellants could have made but chose not to make in the
briefs have not been considered (37 CFR § 41.37(c)(1)(vii)).
OPINION
With respect to the 35 U.S.C. § 102 rejection of the claims
over Guzuk, we initially note that a rejection for anticipation
requires that the four corners of a single prior art document
describe every element of the claimed invention, either expressly
or inherently, such that a person of ordinary skill in the art
could practice the invention without undue experimentation. See
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d
1943, 1947 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-
79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). The inquiry as to
whether a reference anticipates a claim must focus on what
subject matter is encompassed by the claim and what subject
matter is described by the reference. As set forth by the court
in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), it is only necessary for the claims to
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Application No. 10/028,015
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“‘read on’ something disclosed in the prior art reference, i.e.,
all limitations of the claim are found in the reference, or
‘fully met’ by it.” See also Atlas Powder Co. v. IRECO Inc., 190
F.3d at 1346, 51 USPQ2d at 1945 (Fed. Cir. 1999) (quoting
Titanium Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773,
778 (Fed. Cir. 1985)).
Appellants argue that the intermediate metallization layer
114 of Guzuk (shown in Figure 4a) does not indicate “an
orientation of said substrate,” as recited in claim 1, because
each corner of Guzuk’s package looks identical (brief, page 5).
The Examiner responds by stating that the visible portion of
metallization layer 114 “can show whether the lower package
portion is showing the wrong side up or not” (answer, page 5).
The Examiner additionally asserts that providing a visible
portion of the metallization for indicating an orientation of the
substrate is a recitation of the intended use and is met by the
prior art if the reference shows a structure that is capable of
performing that function (answer, page 6). However, in response,
Appellants contend that determining the orientation of a package
is well known in the art to be related to the orientation of the
electrical connection (reply brief, page 3).
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We agree with the Examiner’s position that Guzuk provides
for a portion of the metallization layer 114 to be left uncovered
by upper portion 104/102 of the package and remains visible from
the corners of the upper portion. See Figures 1 and 4a of Guzuk.
In particular, we find appellants’ argument (reply brief, page 3)
that the claimed orientation relates only to the orientation of
the package with respect to the electrical connections to be
overreaching. The visible metallization in claim 1 is recited to
be for “indicating an orientation of said substrate” which
relates, not only to the electrical connection, but the general
orientation of the package substrate. Therefore, as stated by
the Examiner (answer, page 6), to the extent that the visible
portion of metallization layer in the prior art performs the
recited intended use, the claimed function of “indicating an
orientation of said substrate” reads on the structure disclosed
by Guzuk.
Although the Examiner’s characterization of the orientation
of the substrate appears to be different from the orientation
argued by Appellants, the claims do not require the orientation
of the package be related to only electrical connections. The
specification also refers to “orientation of the package” without
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limiting it to the orientation of the package with respect to the
electrical connections, as Appellants would have wanted us to
believe.
Based on our findings above, we agree with the Examiner that
Guzuk prima facie anticipates the claimed subject matter in the
representative independent claim 1. Accordingly, we sustain the
35 U.S.C. § 102(b) rejection of claim 1 as well as claims 3-8,
which fall with their base claim as they have not been separately
argued.
We now consider the rejection of claims 1 and 2 as
anticipated by Ueda. Upon our review of the reference, we remain
unconvinced by Appellants that the relied on portion of Ueda does
not teach the claimed metallization layer (brief, page 5). In
particular, we find the Examiner’s characterization of layer 53
which extends beyond a corner of the upper portion 6 for
indicating an orientation of the package to be reasonable.
Although portion 53 is referred to as the cap connecting pattern
(col. 10, line 54), it is an extension of die-attach portion 16,
which is conducting metallization layer on the lower portion of
the package and is ultimately connected to ground terminal 14
9col. 10, lines 48-53). Therefore, in view of the Examiner’s
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explanation of the prior art teachings and the claimed elements,
we agree with the Examiner that Ueda prima facie anticipates the
claimed subject matter of independent claim 1 and dependent claim
2. Accordingly, the 35 U.S.C. § 102(e) rejection of claims 1 and
2 is sustained.
Turning now to the 35 U.S.C. § 103 rejection of claim 9,
we note that Appellants merely rely on the arguments made with
respect to base claim 1. Therefore, we find the subject matter
of claim 9 to be obvious over the teachings of Guzuk for the same
reasons discussed above with respect to independent claim 1.
Thus, we find that the examiner has established a reasonable case
of prima facie obviousness and sustain the 35 U.S.C. § 103
rejection of the claim 9 over Guzuk.
CONCLUSION
In view of the foregoing, the decision of the Examiner to
reject claims 1-8 under 35 U.S.C. § 102 and rejecting claim 9
under 35 U.S.C. § 103 is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/kis
Appeal No. 2005-2711
Application No. 10/028,015
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