Ex parte MASE

Board of Patent Appeals and Interferences

May 23, 2001

08219853 (B.P.A.I. May. 23, 2001)

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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and is not binding precedent of the Board.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. 54
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AKIRA MASE
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Appeal No. 1997-3120
Application No. 08/219,853
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HEARD: May 15, 2001
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Before KIMLIN, GARRIS and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 34,
36-43, 45-48 and 56-65.
The subject matter on appeal relates to a method for
mounting a semiconductor chip on a substrate and to a method
of producing electrode patterns. This appealed subject matter
Appeal No. 1997-3120
Application No. 08/219,853
We note that the term "organic" in the penultimate line1
of claim 34 lacks antecedent basis. The consequent
informality should be corrected upon return of the application
to the jurisdiction of the examiner by deleting the term
"organic" from claim 34.
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is adequately illustrated by independent claims 34 and 641
which read as follows:
34. A method for mounting a semiconductor chip on a
substrate comprising the steps of:
forming a conductive pattern on one side of a substrate
having an insulated surface;
forming a conductive projection at a predetermined
position on said conductive pattern;
mounting said semiconductor chip on said substrate
utilizing a UV curable adhesive having conductive particles
within the adhesive such that when said substrate and
projection are adhered to the semiconductor chip, a conductive
pad of said chip is electrically connected to said projection
by said particles within said adhesive; and
curing said organic adhesive by irradiating said adhesive
with UV light from another side of said substrate.
64. A method of producing electrode patterns comprising
the steps of:
forming a paste pattern of a resin paste loaded with
conductive metal particles;
baking said paste pattern; and
pressing the baked pattern to produce an even top
surface.
Appeal No. 1997-3120
Application No. 08/219,853
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The references relied upon by the examiner as evidence of
obviousness are:
DesMarais, Jr. (DesMarais) 4,327,124 Apr. 27, 1982
Cassat 4,756,756 Jul. 12, 1988
All of the appealed claims are rejected under the first
paragraph of 35 U.S.C. § 112 as being based upon a disclosure
which would not enable one having ordinary skill in the art to
practice the here claimed invention. In the paragraph
bridging pages 5 and 6 of the Answer, the examiner expresses
his non-enablement position as follows:
In particular, at page 2, lines 28-29, it is
stated that nickel particles having an
average diameter of 15 microns are to be used
in the process. But at page 3, lines 7-11,
describing Fig. 3(A), the specification
provides that the distance between "pad 8"
and the top of "thick portion 3" is
3 microns, even though the nickel particles,
previously described as having an average
diameter of 15 microns, are caught
therebetween. One of ordinary skill in the
art is not taught how to capture the
15 micron average diameter nickel particles
between the pad and thick portion spaced by
only 3 microns. Undue experimentation would
be required.
Additionally, claims 61-65 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Cassat in view of DesMarais.
The examiner concludes that, based on the disclosure of
Appeal No. 1997-3120
Application No. 08/219,853
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DesMarais, "it would have been obvious to one of ordinary
skill in the art practicing the process of Cassat that the
pressing step would have an effect of producing a laminate
with a more even top surface and thus articles of more
consistent quality" (Answer, page 4).
OPINION
We will not sustain either of the above-noted rejections.
The § 112, first paragraph, rejection of all the appealed
claims is not well founded for the reasons expressed by the
appellant in the Reply Brief. Regarding the specific concern
expressed by the examiner of disposing 15 micron size
particles in the 3 micron size gap shown in Figure 3(A) of the
appellant's drawing, we consider the explanation proffered in
the Reply Brief to be rational and consistent with the
appellant's desire to obtain effective electrical contact.
More significantly, the examiner has provided no probative
evidence in support of his refusal to believe and accept this
explanation. In light of his failure to provide such
probative evidence, it is appropriate to regard the examiner
as having failed to carry his initial burden of doubting the
Appeal No. 1997-3120
Application No. 08/219,853
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enablement of the appellant's disclosure. In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
As for the § 103 rejection, it is the examiner's basic
position that the flexible pressure roller referred to in
EXAMPLE 5 of Cassat would provide a pressing step to thereby
produce an even top surface as required by the here rejected
claims. There is simply no basis, however, for assuming that
patentee's flexible pressure roller would exert sufficient
pressure or pressing force so as to produce the desired result
of an even top surface. Certainly, DesMarais provides no such
basis contrary to the examiner's apparent belief. For all we
know based on this record, the flexible pressure roller of
Cassat does not alter in any way the top surface of any
pattern contacted thereby. It follows that the § 103
rejection of claims 61-65 also cannot be sustained.
The decision of the examiner is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
Appeal No. 1997-3120
Application No. 08/219,853
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)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 1997-3120
Application No. 08/219,853
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