Ex parte Moriga

Board of Patent Appeals and Interferences

Nov 27, 1998

08168185 (B.P.A.I. Nov. 27, 1998)

Application for patent filed December 17, 1993. 1
1
Paper No. 24
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte NAMIKI MORIGA
______________
Appeal No. 96-1507
Application 08/168,1851
_______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH, and BARRETT, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 96-1507
Application 08/168,185
2
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 and 8, which constitute all the
claims remaining in the application.
Representative claim 1 is reproduced below:
1. A semiconductor device mounted in a resin sealed
container comprising:
a semiconductor element;
a base including a cavity in which said semiconductor
element is mounted, said base having a bonding surface;
a cover having a bonding surface and a side surface
transverse to the bonding surface of said cover, the bonding
surface of said cover being disposed on the bonding surface of
said base, thereby defining a closed volume including the
cavity;
at least two spaced apart masses of a temporary bonding
resin disposed between and contacting the bonding surfaces of
said cover and said base and including solid particles having
a grain size that determines spacing between the bonding
surfaces of said cover and said base; and
a thermosetting resin bonding material covering the side
surface of said cover and disposed on the bonding surfaces of
said base and said cover, sealing said cover to said base.
The following references are relied on by the examiner:
Schuessler 4,159,221 June 26,
1979
Kovacs et al. (Kovacs) 5,064,968 Nov. 12,
1991
Appeal No. 96-1507
Application 08/168,185
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Claims 1 and 8 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the examiner relies upon Kovacs in
view of Schuessler.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answer for
the respective details thereof.
OPINION
We reverse the stated rejection of claims 1 and 8 under
35 U.S.C. § 103.
The focus of the dispute between the appellant and the
examiner resides in the recitations of the last two clauses of
independent claim 1 on appeal. Neither the examiner nor
appellant discuss the teaching at the bottom of column 4,
lines 56-68 of Schuessler that the sealant material of Figures
3 and 6 of Schuessler’s invention may be preformed from sheet
stock by means of die cutting to yield a gasket-like “preform”
of sealant material which is placed on the periphery of the
inverted cover and subjected to temperature processing. This
appears to be equivalent to appellant’s recognized prior art
approach depicted in Figure 14 of the disclosed invention. On
Appeal No. 96-1507
Application 08/168,185
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the other hand, Kovacs only broadly teaches that the bonding
of the disclosed lid to the base in his invention may be
utilized with a suitable adhesive at column 5, lines 15-20.
Recognizing that the optional teaching of thermosetting
sealants at column 5, lines 29-59 of Schuessler includes
fillers and/or silica would have necessarily provided an
inherent spacing of solid particles between the bonding
surfaces of the cover and the base, claim 1 requires that
there be “at least two spaced apart masses” of this type of
temporary bonding resin disposed between the contacting
bonding surfaces of the cover and the base. The earlier noted
preform would be a single mass rather than the required at
least two masses. Even if we were to consider that there
could be a plurality of separate masses of this temporary
bonding material, following the teachings in Schuessler, there
would be no spacing between the at least two or innumerable
number of separate masses of the temporary resin.
In response to appellant’s arguments in the principal
brief on appeal that two different or distinct bonding resins
are recited, the examiner points out at page 5 of the answer
that this is not what is required by the claim. Such is also
Appeal No. 96-1507
Application 08/168,185
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recognized and admitted by appellant in the reply brief. The
examiner makes mention of the discussion at page 10, lines 4-6
of the specification as filed that the temporary bonding resin
“may be” the same thermosetting resin as the final bonding
material or it may be another thermosetting material. It is
further noted that the thermosetting resin limitation of the
independent claim does not necessarily exclude nor require
that solid particles of any given grain size be within that
resin material in contrast to that which is required in the
early recited feature of claim 1 on appeal of the temporary
bonding resin.
The examiner misstates at page 5 of the answer that the
“temporary bonding resin” is the same as the thermosetting
resin since the specification merely teaches that they may be
the same. Additionally, the examiner’s reasoning continues to
conclude that because of this “the combination of the resins
is equivalent to a single thermosetting resin with fillers.”
On this point, we also do not agree with the examiner. We
find ourselves in general agreement with the assertion made at
the top of page 7 of the principal brief on appeal that even
though the functions discussed in the earlier portion of that
Appeal No. 96-1507
Application 08/168,185
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same paragraph beginning at the bottom on page 6 of the brief
are performed during a process of assembling the claimed
packaged device, both resins remain a part of the completed,
claimed structure. Although there appears to be ample
evidence among the two references relied upon by the examiner
of a thermosetting resin of the type set forth at the end of
claim 1 on appeal, there are no teachings or suggestions or
reasonable inferences that the artisan would have derived from
the applied references and, in the absence of any persuasive
reasoning advanced by the examiner in the answer, it would not
have been obvious to the artisan to have formed the separately
recited “at least two spaced apart masses of a temporary
bonding resin” as recited in independent claim 1 on appeal on
the basis of the evidence provided. Therefore, the rejection
of claims 1 and 8 under 35 U.S.C. § 103 must be reversed.
REVERSED
JAMES D. THOMAS )
Appeal No. 96-1507
Application 08/168,185
7
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )

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Appeal No. 96-1507
Application 08/168,185
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