Ex Parte Moon et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10121515 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HO-JEONG MOON
and KYU-JIN LEE
____________

Appeal 2008-005829
Application 10/121,515
Technology Center 2800
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Decided:1 July 22, 2009
____________

Before JAMES T. MOORE and ALLEN R. MacDONALD, Vice Chief
Administrative Patent Judges, and ADRIENE LEPIANE HANLON,
TERRY J. OWENS, and MICHAEL P. COLAIANNI, Administrative Patent
Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005829
Application 10/121,515

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 through 19, which are all of the claims
pending in the above-identified application. We have jurisdiction pursuant
to 35 U.S.C. § 6.
We REVERSE.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a multi-chip package.
(Claims 1 and 19). The Examiner rejects claims 1-19 under 35 U.S.C. §
103(a) over Kunii2 (JP 06-268113, published Sept. 22, 1994) in combination
with Schulman (US 5,750,926, published May 12, 1998), Goto3 (WO
90/16141, published Dec. 27, 1990), and/or Carr (US 3,289,046, published
Nov. 29, 1966).4

2 Our reference to Kunii is to the translation thereof prepared for the U.S.
Patent and Trademark Office by Akiko Smith (PTO 2007-5542, July 20,
2007).
3 Our reference to Goto is to the translation thereof prepared for the U.S.
Patent and Trademark Office by FLS, Inc. (PTO 08-2828, March 2008).

4 The Examiner states that "Sono et al. (U.S. 5,703,398) could be used as a
primary reference . . ." (Ans. 3, FN 1) (emphasis added). However, it is
clear that Sono is not positively included in the statement of rejection as the
Examiner makes no other reference to Sono in the Answer. Therefore, we
will not consider this reference in determining the propriety of the
Examiner’s rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA
1970) (“[W]here a reference is relied on to support a rejection, whether or
not in a ‘minor capacity,’ there would appear to be no excuse for not
positively including that reference in the statement of the rejection.").

Appeal 2008-005829
Application 10/121,515

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ISSUE
Have Appellants shown reversible error in the Examiner's
determination that Kunii teaches a multi-chip package having the feature
“the heat dissipater is not mechanically coupled to an entire portion of said
first and second surfaces" recited in claims 1 and 19 within the meaning of
35 U.S.C. § 103(a)? We decide this issue in the affirmative.
RELEVANT FINDINGS OF FACT (FF)
1. The originally filed drawings, namely Figures 3, 4, and 5, illustrate a
heat dissipater 30 that is not mechanically coupled to an entire portion
of the first surface 25 and is not mechanically coupled to an entire
portion of the second surface 29 of a substrate 20 (Spec. ¶¶ [0024];
[0025]; [0028]).
2. The Examiner states that Kunii teaches a substrate having "only a
portion of one of its surfaces . . . connected while the other surface has
its entire portion connected." (Ans. 8-9). The Examiner states that
"[m]echanical coupling is simply a bond adherence between materials,
which is achieved . . . [via heat-dissipating member] 10 . . . [and
fibrous metal material] 11." (Ans. 8).
3. Examiner does not direct us to any teaching or suggestion in
Schulman regarding this disputed claim feature.
PRINCIPLE OF LAW
During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
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interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
ANALYSES AND CONCLUSIONS
We begin by noting that claims 1 and 19 require multi-chip packages
having the feature "the heat dissipater is not mechanically coupled to an
entire portion of said first and second surfaces." Giving this claim feature its
broadest reasonable interpretation consistent with the Specification, we
determine that this claim feature requires that a heat dissipater is not
mechanically coupled to an entire portion of each of the first surface and the
second surface of the substrate. This is a reasonable interpretation in light of
the Specification since the originally filed drawings, namely Figures 3, 4,
and 5, illustrate a heat dissipater 30 that is not mechanically coupled to an
entire portion of each first surface 25 and second surface 29 of the substrate
20. (FF 1).
The Examiner alleges that
the claim only precludes the entire surface of both the first and
second surfaces from being entirely coupled. . . . [and that] the claim
also encompasses other embodiments like that disclosed in Kunii
where only a portion of one of its surfaces is connected while the
other surface has its entire portion connected.
(Ans. 8-9).
We disagree because the Examiner’s claim construction is
inconsistent with the Specification as discussed above.
Since one of Kunii's entire surfaces is mechanically coupled to a heat
dissipater, we cannot agree with the Examiner that Kunii meets this disputed
claim feature. (FF 2). Moreover, the Examiner does not direct us to any
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teaching or suggestion in Schulman regarding this disputed claim feature.
(FF 3).
Thus, it follows that Appellants have shown reversible error in the
Examiner's determination that Kunii teaches a multi-chip package having the
feature "the heat dissipater is not mechanically coupled to an entire portion
of said first and second surfaces" recited in claims 1 and 19 within the
meaning of 35 U.S.C. § 103(a).
Because the Examiner relies on Kunii to satisfy the disputed feature in
each rejection on appeal, we reverse all of the § 103 rejections made by the
Examiner.

ORDER
In summary, all of the rejections made by the Examiner are reversed.
Accordingly, the Examiner's decision is reversed.

REVERSED

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