Ex Parte Pon et al

Board of Patent Appeals and Interferences

Jul 24, 2008

10676961 (B.P.A.I. Jul. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FLORENCE R. PON, STEVEN R. ESKILDSEN, and
ROBERT JAI KIM
____________

Appeal 2008-1657
Application 10/676,9611
Technology Center 2800
____________

Decided: July 24, 2008
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
SCOTT R. BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed September 30, 2003. The real party in interest is Intel
Corporation.
Appeal 2008-1657
Application 10/676,961

2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 6-10, 31, and 32.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants' invention relates to the stacking of semiconductor dies in a
die assembly. (Spec. paragraph [0014].)

Claim 1 is exemplary:
1. A method comprising:

stacking an upper die having upper top and bottom
surfaces and upper first, second, third, and fourth edges on top
of a lower die having a lower top surface and lower first,
second, third, and fourth edges such that the upper first edge is
displaced from the lower first edge by a first distance, the upper
first and third edges being opposite to each other, the lower first
and third edges being opposite to each other, the upper bottom
surface facing toward the lower top surface such that bond pads
on the upper die facing downward while bond pads on the
lower die facing upward;

attaching the upper die to the lower die with an adhesive
layer between the upper and lower dies; and

attaching the upper die to a third die such that the lower
die, the upper die, and the third die are stacked in a stair-case
configuration.

2 Claims 3-5 and 11-30 have been withdrawn.
Appeal 2008-1657
Application 10/676,961

3
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hung US 6,476,474 B1 Nov. 5, 2002
Khandros US 5,998,864 Dec. 7, 1999

Claims 1, 2, 6-10, 31, and 32 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Hung and Khandros.

Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).3

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a).

3 Except as will be noted in this opinion, Appellants have not presented any
substantive arguments directed separately to the patentability of the
dependent claims. In the absence of a separate argument with respect to
those claims, they stand or fall with the representative independent claim.
See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 10/676,961

4
PRINCIPLES OF LAW
All timely filed evidence and properly presented arguments are
considered by the Board in resolving an obviousness issue on appeal. See In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472.
When that burden is met, the burden then shifts to the Applicant to rebut.
Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding
rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence
of adequate weight, the prima facie case of unpatentability is dissipated. In
re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in
view of the entire record. Id. However, on appeal to the Board it is the
Appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) ("On appeal to the Board, an applicant can
overcome a rejection [for obviousness] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
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In KSR, the Supreme Court reaffirmed that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." Id. at 1739. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 1740.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d at 988. "To facilitate review, this
analysis should be made explicit." KSR, 127 S. Ct. at 1741. However, "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id.
The Supreme Court noted that "[u]nder the correct analysis, any need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed." Id. at 1742. The Court also noted that "[c]ommon
sense teaches . . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
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6
to fit the teachings of multiple patents together like pieces of a puzzle." Id.
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.

ANALYSIS
Appellants contend that the Examiner erred in rejecting claims 1, 2,
6-10, 31, and 32. Reviewing the record before us, we do not agree. In
particular, we find that the Appellants have not shown that the Examiner
failed to make a prima facie showing of obviousness with respect to claims
1, 2, 6-10, 31, and 32. Appellants failed to meet the burden of overcoming
that prima facie showing.
Regarding independent claims 1 and 31, Appellants argue that Hung
does not teach or suggest "a stair-case configuration4 extending tomore [sic]

4 At certain places in the Brief, Appellants present arguments regarding a
"staggered configuration" rather than the claimed "stair-case configuration."
(App. Br. 6, 9.) In the Reply Brief, Appellants state that "although the
Applicant's Appeal Brief contains the word 'staggered', all the arguments are
Footnote continued on the next page.
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than two dies because of the manner in which the bonding wires are
connected to the conductive leads," Khandros does not teach or suggest "the
bond pads facing each other," and therefore Hung and Khandros cannot be
combined. (App. Br. 7.) In addition, Appellants argue that there is no
motivation to combine the teachings of Hung and Khandros. (App. Br. 7-8.)
We do not agree.
As the Examiner correctly found, Hung teaches, among other things,
two dies stacked in a stair-case configuration with bond pads facing each
other (Ans. 4-5; Hung Fig. 2F; col. 3, l. 34 to col. 4, l. 7) and Khandros
teaches attaching a third die so that the first, second, and third dies are
stacked in a stair-case configuration (Ans. 5; Khandros Fig. 4A; col. 6,
ll. 40-45; col. 7, ll. 4-65; col. 8, ll. 46-48, 60-63). We agree with the
Examiner (Ans. 5) that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to combine the teachings of Hung
and Khandros and attach the third die of Khandros to the upper die of Hung,
as taught by Khandros.
Consistent with the teachings of Khandros (col. 2, ll. 24-26; col. 7,
ll. 35-39), the Examiner reasoned that the combination would increase the
power and function of the semiconductor package without taking up a large
area on the printed circuit board and would provide for easy inventorying of
the semiconductor devices. (Ans. 5, 11.) In addition, we note that both

applicable for the 'stair-case configuration'." (Reply Br. 3.) Because
independent claims 1 and 31 clearly recite a "stair-case configuration" rather
than a "staggered configuration," we treat Appellants' arguments regarding a
"staggered configuration" as being directed to the claimed "stair-case
configuration."
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Hung and Khandros are directed to packaging multiple semiconductor chips
in a single package module (Hung Abstract, col. 1, ll. 8-13, col. 2, ll. 18-25;
Khandros Abstract, col. 2, ll. 24-29). We agree with the Examiner's
reasoning and find that the Examiner has established a proper motivation to
combine the teachings of the references.
Although Appellants are correct that the bond pads of Khandros do
not "face each other," the Examiner cited Hung for this teaching (Ans. 4-5,
10). In addition, Appellants' arguments regarding the manner of connecting
the bonding wires to the conductive leads in Hung are not convincing
because they are not commensurate with the scope of the claims.
Specifically, claims 1 and 31 merely require "attaching the upper die to a
third die such that the lower die, the upper die, and the third die are stacked
in a stair-case configuration." The claims do not require any particular
manner of attaching bonding wires to the third die. Indeed, the claims do
not require that bonding wires be connected to the third die at all.
Furthermore, we agree with the Examiner that Hung discloses a plurality of
leads and thus can be expanded to more than two dies. (Ans. 9; Hung Fig.
2F, col. 2, ll. 26-30, col. 3, ll. 56-57.)
Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claims 1 and 31 under 35 U.S.C. § 103(a).
Dependent claims 2, 6, 8-10, and 32 were not argued separately and fall
together with independent claims 1 and 31, from which they depend.
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With respect to claim 7,5 Appellants argue that Hung does not disclose
a redistribution layer, as claimed. (App. Br. 7.) We do not agree. The
Examiner found that Hung discloses a redistribution layer by disclosing "a
layer that contains the bond pads 210 and provides electrical connections
between the bond pads 210 and internal elements inside of the upper die
200; column 3, lines 42-47." (Ans. 5; see also Ans. 10.) We agree with the
Examiner that, under a broad but reasonable interpretation of the claim,
Hung suggests a redistribution layer.
In addition, Figure 9 of Khandros teaches a redistribution layer.
(Khandros Fig. 9; col. 9, l. 57 to col. 10, l. 4.) Specifically, Khandros
teaches conductive lines 906 that connect between bond pads 904 and
terminals 908 formed at desired locations along the edges of the
semiconductor device (Id.) and "[i]n this manner, the terminals of the
semiconductor devices described herein can be re-routed from an initial
location 904 to a desired (e.g., edge) location 908 on the semiconductor
device." (Khandros col. 10, ll. 1-4.) This interpretation is not inconsistent
with the Specification, which teaches that "[w]hen the bond pads are not
suitably placed, a redistribution layer (not shown) may be formed to
redistribute the interconnection pattern." (Spec. 4, paragraph [0020].) Using
the redistribution layer of Khandros in the die of Hung would have been no
more than the combination of familiar elements according to known
methods, with no unpredictable results. See KSR, 127 S. Ct. at 1739.

5 Appellants also argue claim 17 with claim 7. (App. Br. 7.) However, as
the Examiner points out (Ans. 10), claim 17 has been withdrawn.
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Accordingly, we conclude that Appellants have not shown that the
Examiner erred in rejecting claim 7 under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 2, 6-10, 31, and 32 for obviousness under 35 U.S.C.
§ 103.

DECISION
The rejection of claims 1, 2, 6-10, 31, and 32 for obviousness under
35 U.S.C. § 103 is affirmed.

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).

AFFIRMED

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