Ex Parte Mengel et al

Patent Trial and Appeal Board

Dec 13, 2013

12053830 (P.T.A.B. Dec. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/053,830 03/24/2008 Manfred Mengel I550.164.101/2007P53177US 5030
25281 7590 12/13/2013
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
PAYEN, MARVIN
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
12/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MANFRED MENGEL and JOACHIM MAHLER
________________

Appeal 2011-008642
Application 12/053,830
Technology Center 2800
________________

Before FRED E. McKELVEY, TERRY J. OWENS, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

DECISION ON APPEAL

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Appeal 2011-008642
Application 12/053,830

3
1. A semiconductor device comprising:
a carrier [1];
a structured layer [2 including 3 and 4] arranged over the
carrier [1]; and
a semiconductor chip [5] applied to the structured layer
[2], wherein the structured layer comprises a first structure
made of an elastic material [3] and a second structure made of
an adhesive material [4], wherein the first structure is separate
from the second structure so that the structured layer has a non-
homogeneous overall structure.

25. A semiconductor device comprising:
a carrier [1] ;
means for providing a structured layer [2] arranged over
the carrier [1] ; and
a semiconductor chip [5] applied to the structured layer,
wherein the structured layer comprises means for providing a
first structure made of an elastic material [3] and means for
providing a second structure made of an adhesive material [4],
wherein the first structure is separate from the second structure
so that the structured layer has a non-homogeneous overall
structure.
App. Br., Claims App’x.

2 To the extent that the claims on appeal are separately argued, we will
address them separately, consistent with 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-008642
Application 12/053,830

4
Appellants appeal the rejection of claims 1-10 and 25 under 35 U.S.C.
§ 103(a) over Santos3 in view of Fukui.4
We affirm the rejection. We agree in part with the reasons given by
the Examiner in the Examiner’s Answer mailed February 10, 2011 (“Ans.”),
as further explained below.

OPINION
Claims 1, 3, 5-10, and 25
Santos Fig. 1 is reproduced below. With respect to claims 1, 3, 5-10,
and 25, the Examiner finds that Santos teaches a semiconductor device 50
comprising a carrier 70, a structured layer 90 arranged over the carrier, a
semiconductor chip 62 applied to the structured layer 90, wherein the
structured layer comprises a first structure made of an elastic material
(thermoplastic elastomers) and a second structure (thermosetting resin
composition) made of an adhesive material. However, the Examiner finds
that Santos fails to teach wherein the first structure is separate from the
second structure so that the structured layer has a non-homogeneous overall
structure. Ans. 4.

3 US Pub. No. 2005/0008832 A1, published in the name of Santos et al. on
January 13, 2005.
4 US Pat. No. 6,831,241 B2, issued to Fukui et al. on December 14, 2004.
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.
Appeal 2011-008642
Application 12/053,830

6
We only consider the arguments made by Appellants in the brief on
appeal. 37 C.F.R. § 41.37(c)(1)(vii) (2011) (An appeal brief shall include
“[t]he contentions of appellant . . . and the basis therefor,” and “[a]ny
argument . . . not included in the brief or a reply brief . . . will be refused
consideration . . . .”).
Appellants argue, first, that the teachings of Santos and Fukui relate to
different technical fields. App. Br. 6; Reply Brief filed April 11, 2011
(“Reply Br.”) at 2-3. Secondly, Appellants argue that “one of ordinary skill
in the art at the time of invention would not combine Santos with Fukui
since there is no motivation to combine the references and the references
actually teach away from such a combination.” App. Br. 7; see also Reply
Br. 3.
First, the Examiner finds that “the correlation between the prior art is
that both Santos et al. and Fukui et al. attach or fix a component to a
substrate through the use of an adhesive material.” Ans. 8. We agree with
the Examiner that both Santos and Fukui are pertinent to the Appellants’
claimed invention. To the extent that Appellants attempt to make a non-
analogous art argument, Appellants fail to present argument and evidence
that (1) the art is not from the same field or endeavor, regardless of the
problem addressed, and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011).
Secondly, the Examiner finds that there is a sufficient reason for
combination of Santos with Fukui. Ans. 9-11. The Examiner reasons, inter
Appeal 2011-008642
Application 12/053,830

7
alia, that Fukui’s stacked body “serves as a stress buffer, which is a main
objective of the prior art, to minimize deformation caused by the repeated
application of a pressing force.” Id. at 10. Thus, the Examiner finds that
using the materials of Fukui “should lead to the same functionality and
intended use and the motivations (elasticity, adhesion and stress buffer) to
use Fukui’s stacked body in other devices are clearly disclosed.” Id. at 11.
We agree with the Examiner’s finding in this respect. Moreover, contrary to
Appellants’ assertion that Santos “does not even mention the problem of
avoiding stress or tension[,]” App. Br. 7, Santos states:
Little progress has been reported to date, however, at reducing
the internal package stresses that lead to the ILD [interlayer
dielectrics] cracking failures. . . . [I]t would be desirable to
provide electronic packages assembled with such ILD’s and
methods of manufacturing such electronic packages that
provide enhanced physical properties.
Santos ¶¶ [0006]-[0007]. Even if Santos were silent as to the problem of
avoiding stress or tension, this is not evidence of teaching away from the
ultimately claimed device. Mere silence about a particular feature does not
tend to teach away from it, especially if it is disclosed elsewhere in the prior
art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir.
2005).
In summary, we find the Examiner has provided an articulated
reasoning with rational underpinning to support a prima facie case of
obviousness of claims 1, 3, 5-10 and 25. KSR Int’l Co. v. Teleflex Inc., 550
US 398, 418 (2007).
We agree with the Examiner’s finding that Santos fails to teach
wherein the first structure is separate from the second structure so that the
Appeal 2011-008642
Application 12/053,830

8
structured layer has a non-homogeneous overall structure, and with the
Examiner’s reliance on Fukui to remedy this deficiency. Ans. 4-5.
However, we disagree with the Examiner’s interpretation of Santos as
having a structured layer 90, wherein the structured layer comprises a first
structure made of an elastic material (thermoplastic elastomers) and a second
structure (thermosetting resin composition) made of an adhesive material.
Id. at 4. Santos’ layer 90 is a homogeneous die attach adhesive material.
Santos, ¶ [0038], ¶¶ [0045]-[0046]. Die attach material 90 may “be a
thermosetting resin composition,” which may include a maleimide-,
itaconamide- or nadimide-containing compound, id. at ¶ [0045], and “the
pre-applied die attach adhesive material may include additional materials
that are co-curable with the maleimide-, itaconamide- or nadimide-
containing compound, such as . . . thermoplastic elastomers that aid in
forming a film when mixed with the maleimide-, itaconamide- or nadimide-
containing compound.” Id. at ¶ [0046] (emphasis added).
Even assuming that Santos fails to teach a discrete first structure and
second structure, Fukui nevertheless teaches two discrete layers, a first
structure (insulating layer 70) separate from the second structure (adhesive
50). Fukui Fig. 1, supra. In this finding, the Examiner has not erred. Given
the Examiner’s well-supported finding that Santos and Fukui can be
combined, and given that the limitations of claim 1 are met by the
combination of Santos and Fukui, we find that the Examiner’s partial
misinterpretation of Santos is harmless error.

Appeal 2011-008642
Application 12/053,830

9
Claim 2
With respect to claim 2, the Examiner finds that Santos fails to
explicitly teach “the surface area of at least one of the first structure and the
second structure is smaller than the surface area of the structured layer.”
Ans. 5. However, the Examiner cites paragraph [0181] of Santos as teaching
“the die attach adhesive material contains in the range of about 10 wt % up
to about 95 wt % thermoplastic elastomer.” Id.
Appellants contend that Santos “merely discloses the weight
proportions of components included in the layer 90. The given weight
proportions do not provide any information about surface areas of
components included in layer 90.” App. Br. 8. The Examiner does not
address this argument in the Response to Arguments section of the Answer.
We agree with Appellants that paragraph [0181] of Santos fails to
disclose the features of claim 2. However, we disagree with Appellants’
assertion that neither Santos nor Fukui teach or suggest the features of claim
2. As discussed supra, Santos discloses a layer 90, and Fukui discloses a
first structure 70 and a second structure 50 within a structured layer. As
shown in Fig. 1 of Fukui, supra, the surface area of either the first structure
or of the second structure is smaller than the surface area of the structured
layer of which both are a part. Thus, the combination of Santos and Fukui
renders the subject matter of claim 2 obvious.

Claim 4
With respect to Claim 4, the Examiner finds that paragraphs [0191]-
[0192] of Santos teach “the height of the first structure is less than 100
Appeal 2011-008642
Application 12/053,830

10
micrometers and in particular lies in a range from 1 to 20 micrometers.”
Ans. 6.
Appellants argue that the cited portions of Santos “merely disclose
that filler particles may have flake or powder form and further discloses
some specific values on the dimensions of the particles. Information on the
dimensions of the filler particles taken alone, however, does not provide any
indication about the height of a structure made with the particles.” App. Br.
8. Specifically, Santos provides that “[i]n flake form, the filler may have a
thickness of less than about 2 microns, with planar dimensions of about 20
to about 25 microns.” Santos ¶ [0191]. The Examiner does not address this
argument in the Response to Arguments section of the Answer.
As a preliminary matter, we conclude that the language of claim 4 is
indefinite and therefore newly reject claim 4 under 35 U.S.C. § 112, second
paragraph. It is unclear if Appellants’ use of the words “in particular” is
intended to limit the range to between 1 and 20 micrometers, or include in
the range anything less than 100 micrometers. According to the
Specification, “less than 100” and “from 1 to 20” may be alternative
embodiments. Spec., 6, ll. 3-5. See also Spec., 11, l. 29 to 12, l. 2 which
can be read to indicate that “from 1 to 20” is preferred within a range of
“less than 100.” The time to correct any possible indefiniteness is while an
application is undergoing examination. In re Zletz, 893 F.2d 319, 322 (Fed.
Cir. 1989) (“An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
Appeal 2011-008642
Application 12/053,830

11
administrative process”). See also Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).
Indefiniteness aside, applying the broadest reasonable interpretation of
the claim language, we can construe the claim as intending to include any
height of less than 100 micrometers. Fukui specifies that in an exemplary
embodiment, “insulating layer 70 is 30 µm thick and adhesive 50 is 15 µm
thick.” Fukui, col. 6, ll. 34-35. Under this interpretation, Fukui meets the
claim limitation of any height less than 100 micrometers.
Alternatively, even if we were to interpret the claim as limiting the
range from 1 to 20 micrometers, a prima facie case of obviousness can be
established where the only difference between the prior art and the claimed
subject matter is a difference in a range of a particular variable. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also Titanium Metals
Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (a prima facie
case of obviousness exists when the claimed range and the prior art range do
not overlap but are close enough that one skilled in the art would have
expected them to have the same properties.) Appellants have not directed us
to any portion of the record that illustrates the criticality of the claimed range
or any unexpected results relative thereto. Insofar as the record is
concerned, use of “less than 100” achieves the same function as use of “1 to
20.”
As discussed supra, the combination of Santos and Fukui is proper.
Thus, the combination of Santos and Fukui meets the limitations of claim 4.

Appeal 2011-008642
Application 12/053,830

12
DECISION

Upon consideration of the appeal, and for the reasons given herein, it
is
ORDERED that the decision of the Examiner rejecting the
claims on appeal under § 103 over the prior art is affirmed.
FURTHER ORDERED that since we have relied on Santos and
Fukui, and perhaps have advanced a new rationale in support of
obviousness, our affirmance is designated as a new rejection. 37 C.F.R.
§ 41.50(b) (2011).
FURTHER ORDERED that claim 4 is newly rejected under
35 U.S.C. § 112, second paragraph, as indefinite. 37 C.F.R. § 41.50(b)
(2011).
FURTHER ORDERED that our decision is not a final agency
action.
FURTHER ORDERED that within two (2) months from the
date of our decision, appellant may further prosecute the application on
appeal by exercising one of the two following options:
Option 1: Request that prosecution be reopened by
submitting an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1)
(2011).
Option 2: Request rehearing on the record presently
before the Board. 37 C.F.R. § 41.50(b)(2) (2011).
FURTHER ORDERED that 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).
Appeal 2011-008642
Application 12/053,830

13

AFFIRMED
37 C.F.R. § 41.50(b)(2) (2011)

bar