Ex parte Martin et al.

Board of Patent Appeals and Interferences

Apr 5, 2001

08471748 (B.P.A.I. Apr. 5, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding
precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. MARTIN and CARL M. ROBERTS JR.
____________
Appeal No. 1998-2907
Application No. 08/471,748
____________
ON BRIEF
____________
Before KRASS, GROSS, and BARRY, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 22 and 24 through 41, which are
all of the claims pending in this application.
Appellants' invention relates to a package for sealing an
integrated circuit die and the method of sealing the die.
Claim 25 is illustrative of the claimed invention, and it
reads as follows:
25. An apparatus comprising:
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a semiconductor die having a movable part in a top face
of the die; and
a cap bonded over the first face so that a void region is
defined between the cap and the part, an outer periphery of
the cap surrounding and sealing the part, wherein the cap is
made of metal.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Greiff et al. (Greiff) 5,216,490 June. 01, 1993
Roylance et al., "A Batch-Fabricated Silicon Accelerometer,"
IEEE Transactions on Electron Devices, Vol. ED-26, No. 12
(December 1979), pages 1911-17. (Roylance)
Appellants' admitted prior art shown in Figure 1 and discussed
on page 6 of the specification. (AAPA)
Claims 1 through 22 and 24 through 41 stand rejected
under 35 U.S.C. § 103 as being unpatentable over AAPA in view
of Roylance and Greiff.
Reference is made to the Examiner's Answer (Paper No. 17,
mailed February 17, 1998) for the examiner's complete
reasoning in support of the rejection, and to appellants'
Brief (Paper
No. 16, filed December 1, 1997) and Reply Brief (Paper No. 18,
filed March 23, 1998) for appellants' arguments thereagainst.
OPINION
Appeal No. 1998-2907
Application No. 08/471,748
3
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 22 and 24 through 41.
We substantially agree with appellants' arguments with
the following embellishments. The examiner misinterprets
appellants' argument regarding the combinability of AAPA with
Roylance and Greiff as an assertion that the references are
non-analogous. As such, the examiner never responds to the
argument. The examiner should understand the difference.
Specifically, references are non-analogous if not from the
same field of endeavor and not pertinent to the problem solved
by appellants. See In re Clay, 966 F.2d 656, 658, 23 USPQ2d
1058-59, 1060 (Fed. Cir. 1992). On the other hand, references
may meet the criteria set forth in Clay and not be combinable.
For example, one reference may teach away from the
modification suggested by the other or there may be no
suggestion in the references to combine.
In the present case, Roylance teaches away from using
adhesive for sealing the cap to the die, as required by claims
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3, 9 through 14, 16 through 20, 22, 24, 27, and 29 through 35,
because Roylance discloses using anodic bonding specifically
to avoid the use of an adhesive. (The adhesive referenced by
the examiner fills the region between the two glass covers and
around the leads, but does not connect the cover to the die.)
Roylance further teaches away from using plastic, as required
by claims 1 through 8, 10 through 12, 30 through 36, and 38,
because the glass layers are disclosed as taking the place of
the TO-5 or dual-in-line package normally used for IC's.
Further, Greiff adds nothing to overcome either deficiency.
Therefore, the examiner has failed to establish a prima facie
case of obviousness, and we cannot sustain the rejection of
claims 1 through 14, 16 through 20, 22, 24, 27, 29 through 36,
and 38.
Regarding the rejection of claim 15 and the claims
dependent therefrom, claims 39 through 41, the examiner states
(Answer, pages 4-5) that Greiff shows a silicon cover with
metal layers of various conductive materials, wherein the
"layers can be connected to voltage wires on the chip." The
examiner continues that it would have been obvious "to have
used the cover structure of Greiff et al with the devices of
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the prior art and Roylance et al, since Greiff et al teaches
the benefits of a transducer with a cover that extends over an
accelerometer to isolate and protect it." Later, the examiner
asserts (Answer, page 6) that the steps of providing a first
and a second layer of glass or metal and heating to
hermetically seal them would have been obvious because
"Roylance shows glass cover and Greiff shows metal layers."
First, we note that we find no benefits of using a cover
over an accelerometer disclosed in the portion of Greiff
relied upon by the examiner. Second, the examiner has
provided no explanation as to how one would combine the
structures of Greiff and Roylance to arrive at the claimed
invention. As pointed out by appellants (Brief, page 8), that
Roylance discloses a glass cover and Greiff discloses metal
layers "does not suggest that it would have been obvious to
form these layers in a cap and in a substrate and then bond
them together to form a hermetic seal." Accordingly, with no
reason to combine the references, the examiner fails to set
forth a prima facie case of obviousness, and we cannot sustain
the rejection of claims 15 and 39 through 41.
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Similarly, for claim 21 and its dependent, claim 28, the
examiner fails to provide motivation for combining the
references in such a way as to arrive at the claimed
invention. In particular, the admitted prior art includes a
paddle bonded to the bottom of the semiconductor die and a
movable mass suspended in the top face of the die, as recited
in the claims. Roylance, on the other hand, has the paddle
supporting the mass with the cover bonded to the end of the
paddle. Greiff discloses no paddle at all. Therefore, it is
unclear to us how one would combine the three references to
arrive at a cap bonded over the top of the die and a metal
paddle bonded to the bottom of the die. As the examiner never
specifically addresses these limitations, there is no prima
facie of obviousness, and we cannot sustain the rejection of
claims 21 and 28.
Last, as to claim 25 and its dependents, claims 26 and
37, merely that Greiff includes metal layers in the bridge
electrode does not render it obvious to the skilled artisan
to form a cap of metal over the accelerometer. There is no
indication in Greiff that the bridge electrode completely
covers the accelerometer so as to protect it. Further, as
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Roylance actually discloses covers, and forms them of glass,
it is unclear why one of ordinary skill in the art faced with
Greiff's metal layers in the bridge electrode, would use caps
or covers of metal. Thus, the examiner again has failed to
establish a prima facie case of obviousness, and we cannot
sustain the rejection of claims 25, 26, and 37.
CONCLUSION
The decision of the examiner rejecting claims 1 through
22 and 24 through 41 under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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AG/RWK
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WAYNE M KENNARD
HALE AND DORR
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