Ex Parte Punzalan et al

Board of Patent Appeals and Interferences

Nov 6, 2009

11164335 (B.P.A.I. Nov. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY D. PUNZALAN, HENRY D. BATHAN,
and IL KWON SHIM
____________

Appeal 2009-004064
Application 11/164,335
Technology Center 2800
____________

Decided: November 9, 2009
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and KARL D. EASTHOM,
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-2, 6-12, and 16-20 (App. Br. 5). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ disclosed invention relates to a non-leaded circuit package
system 100 made by fusing or etching an extension between a die paddle
102 and terminal pads to form extensions, such as, for example, corner
extensions 402. (Abstract, Spec. ¶¶ 0040-41; Fig. 4).
Exemplary claims 1 and 6 follow:
1. A non-leaded integrated circuit package system comprising:
providing a die paddle of a lead frame;
forming a dual row of terminals including outer terminal pads and inner
terminal pads; and
selectively fusing an extension between the die paddle and instances of the
inner terminal pads.

6. A non-leaded integrated circuit package system comprising:
providing a die paddle of a lead frame;
forming a dual row of terminals of the lead frame, wherein the dual row of
terminals include a staggered arrangement of outer terminal pads and
inner terminal pads; and

1 Reference is made to Appellants’ Brief (filed Jan. 14, 2008) (“App. Br.”)
and Reply Brief (filed Aug. 12, 2008) (“Reply Br.”), and the Examiner’s
Answer (mailed June 9, 2008) (“Ans.”) and Office Action Final Rejection
(mailed Aug. 14, 2007) (“Fin. Rej.”).
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selectively fusing an extension between the die paddle and instances of the
inner terminal pads, wherein the extension depopulate [sic] the
instances of the inner terminal pads used to form the extension.

The Examiner relies on the following prior art references:2
Muyshondt US 5,475,606 Dec. 12, 1995
Andric US 6,515,861 B1 Feb. 4, 2003
Kawai US 2003/0127711 A1 Jul. 10, 2003
Lee US 6,867,071 B1 Mar. 15, 2005

The Examiner rejected:3
Claims 1-2, 6-8, and 10-12 as anticipated under 35 U.S.C. § 102(b)
based on Kawai;
Claim 9 as obvious under 35 U.S.C. § 103(a) based on Kawai, Andric,
and Muyshondt;
Claims 16-18 and 20 as obvious under 35 U.S.C. § 103(a) based on
Kawai and Lee; and
Claim 19 as obvious under 35 U.S.C. § 103(a) based on Kawai and
Lee, Andric, and Muyshondt.
ISSUES
Appellants argue that claims 1, 2, 6-8 and 10-12 are improperly
rejected as anticipated by Kawai because Kawai does not teach “selectively
fusing an extension” as recited in claims 1 and 6, and a similar limitation

2 The Examiner also relied upon a dictionary source (first cited in the Final
Rejection), to define “fuse” as discussed below in the “ANALYSIS” section.
3 Subsequent to the Appeal Brief, the Examiner withdrew all previous 35
U.S.C. § 112 second paragraph rejections (Ans. 3).
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recited in claim 11. Appellants also argue that Kawai’s extension does not
“depopulate the instances of inner terminal pads” as further required by
claim 6. Finally, Appellants argue that the Examiner improperly rejected
claim 9 based on Kawai, Andric, and Muyshondt, because Kawai does not
teach “multiple ground planes” as required by claim 9. (App. Br. 19-22).
Therefore, pursuant to 37 C.F.R. § 41.37(c)(1)(vii), claim 1 is selected
to represent the “fusing” issue involved in claims 1, 2, 6-8 and 10-12. Claim
6 is selected to represent the “depopulate” issue involved in independent
claim 6 and claims 7-10 dependent therefrom. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellants’ arguments present the following issues:
Did Appellants demonstrate that the Examiner erred in finding that
claim 1 reads on Kawaii’s integrated package system, including the process
limitation of “fusing”?
Did Appellants demonstrate that the Examiner erred in finding that
Kawai teaches “wherein the extension depopulate [sic] the instances of the
inner terminal pads used to form the extension” as recited in claim 6?
Did Appellants demonstrate that the Examiner erred in finding that
Kawai, Andric, and Mushondt collectively teach “multiple ground planes
with the die paddle” as recited in claim 9?

FINDINGS OF FACT (FF)
Appellants’ Disclosure
1. Appellants disclose forming the extensions as follows: “The corner
extensions 402 may be formed by fusing the die paddle 102 to the instances
of the inner terminal pads 114, as required. Other processes may be used to
form the corner extensions 402, such as half etching.” (Spec. ¶ 41).
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2. Appellants mention “depopulated” in the next paragraph: “The
corner extensions 402 also cover corner areas of a number of the inner
terminal pads 114 such that the instances of the inner terminal pads 114 are
depopulated” (Spec. ¶ 42).
Collins English Dictionary
3. “fuse . . . 3. to join or become combined; integrate. . . . Collins
English Dictionary (2000), avail. at
http://www.xreferplus.com/entry/hcengdict/fuse_2

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On appeal, the burden
shifts to Appellants to overcome the prima facie case with arguments and/or
evidence. See id.
Under § 102, anticipation is established when a single prior art
reference discloses expressly or under the principles of inherency each and
every limitation of the claimed invention. In re Paulsen, 30 F.3d 1475,
1478-79 (Fed. Cir. 1994). “A reference anticipates a claim if it discloses the
claimed invention ‘such that a skilled artisan could take its teachings in
combination with his own knowledge of the particular art and be in
possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir.
1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962) (emphasis
omitted).
Under § 103, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” KSR
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Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
During examination of a patent application, the PTO “is obligated to
give claims their broadest reasonable interpretation during examination.” In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
“[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) (citations omitted). “‘[C]laims must be construed so as to be
consistent with the specification, of which they are a part.’” Id. at 1316
(citation omitted). However,
[t]hough understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
ANALYSIS
Claims 1-2, 6-8 and 10-12 – Anticipation based on Kawai
Appellants disagree with the Examiner’s finding (Ans. 2-4) that claim
1, reciting a product, reads on Figures 40C, 40D, 41A, and 41B of Kawai
because Kawai’s extensions are “manufactured in one piece” (App. Br. 18)
or “formed by an etching, or non-heat using process” (Reply Br. 7), instead
of by fusing as recited in claims 1 and 6. However, as the Examiner
reasoned, “claims 1 and 6 are product claims” and “fusing” constitutes a
“‘product-by-process’” limitation (Fin. Rej. 13) (quoting In re Thorpe, 777
F.2d 695, 698 (Fed. Cir. 1985)) (“If the product-by-process claim is the
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same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.”).4
Appellants do not describe why or how their disclosed method of
fusing renders a product that is structurally different than Kawai’s product
made by etching. Moreover, Appellants’ disclosure indicates that the same
product can be made by either “fusing” or “half etching” (FF 1).
Where the Examiner demonstrates a reasonably similar or same prior
art process in a product by process claim, the burden shifts to Appellants to
show lack of inherency in the claimed product. In re Thorpe, 777F.2d 695,
698 (Fed. Cir. 1985). Appellants do not meet this burden. Appellants do not
point to any structural differences resulting from the different processes of
etching or “manufactured in one piece,” on the one hand, and fusing on the
other.
Appellants state that “[t]hose having ordinary skill in the art would
interpret the ‘selectively combining’ or ‘selectively blending’ of the

4 As indicated, the Examiner first reasoned that claims 1 and 6 are “product-
by-process” claims in the Final Rejection (Fin. Rej. 13-15), contrary to
Appellants’ statement that this reasoning first appeared in the Answer
(Reply Br. 3). Appellants did not contest this construction in their opening
Brief. The claims, reciting a “system,” can be construed reasonably as
drawn to either a product (i.e., a “system”) made by a process, as the
Examiner determined, or a process. Appellants’ new Reply Brief argument
(id.) that claims 1 and 6 constitute process (as opposed to product) claims,
was not necessitated by a new point in the Answer. As such, Appellants’
have waived their new argument. See Optivus Tech., Inc. v. Ion Beam
Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief ... is waived.”) (citations and quotation
marks omitted); see also Ex parte Scholl, No. 3653, slip op. at n.13 (BPAI
Mar. 13, 2008) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (same).
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extension as requiring the structural characteristics of being combined or
blended by melting” (Reply Br. 6). However, in line with the discussion
supra, this statement does not point to any such distinct “structural
characteristics.” That is, “being combined or being blended by melting”
merely describes a process which includes “melting,” as opposed to any
distinct structure resulting from the process of “melting.”
As Appellants acknowledge (Reply Br. 6-7), the Examiner relied upon
the following definition for fuse: “The term ‘fuse’ is defined as ‘to blend
thoroughly by or as if by melting together: COMBINE.’” (Fin. Rej. 13;
Ans. 16-17). According to the Examiner, as Appellants’ argument implies
(Reply Br. 6), the Examiner relies on “COMBINE” to define “fuse” -
without any requirement for “melting” or “heating.” In light of Appellants’
disclosure lacking any definition for fusing, and evidencing that fusing and
etching produce the same product (FF 1), the Examiner’s construction,
comporting as it does with another standard definition for “fuse” ( i.e., “fuse
. . . 3. to join or become combined; integrate” (FF 3)), is reasonable.
“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.” In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997).
“The appellants urge us to consult the specification . . . and interpret
the disputed language more narrowly in view thereof . . . . Such an approach
puts the burden in the wrong place. It is the applicants’ burden to precisely
define the invention, not the PTO’s.” Id. “The problem in this case is that
the appellants failed to make their intended meaning explicitly clear.” Id.
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Claims 6-8 and 10
Appellants further argue (App. Br. 20) with respect to the anticipation
rejection of claim 6 that, “Kawai does not ‘depopulate the instances of the
inner terminal pads’ and the Examiner has made no showing with regard to
this limitation so it is respectfully submitted claim 6 is allowable . . . . ”
The Examiner found:
Once the extensions are fused (or combined) with instances of
inner terminal pads and the final structure is produced, the pads
do not exist by themselves (but only in combined form) and
hence this combined form is distinguished from the inner
terminal pads. In other words, to the extent the claim is
understood, the inner terminal pads are depopulated to create an
alternate structure (the said combined form).
(Fin. Rej. 14-15).
Thus, contrary to Appellants’ argument, the Examiner made a
reasonable showing with respect to the argued limitations of claim 6.
Appellants have not responded to the Examiner’s showing in a sufficient
manner to demonstrate particular error. In light of the Specification (FF 2),
existing terminal pads and/or combined extensions/pads constitute a final
structure having “depopulated” inner terminal pads by precluding
(depopulating) the existence of more “populated” smaller or additional pads
in the area occupied by the existing (larger or extension combined) terminal
pads.
Therefore, we sustain the Examiner’s rejection of claim 1 and 6, and
claims 2, 7-8, and 10-12, which were not separately argued and fall with
claims 1 and 6.
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Claim 9 – Obviousness based on Kawai, Andric, and Muyshondt
Appellants “submit[ ] that the claim relates to multiple ground planes
with the die paddle. Kawai FIGs 40C, 40D, 41A and 41B show all the
ground connection leads 143 connected to the die pad 146, which means that
there can only be one ground plane with a Kawai pad in any combination
involving Kawai” (App. Br. 22). The Examiner recited the relevant
teachings in Andric and Muyshondt as a basis “to modify the invention of
Kawai such that the extension comprises multiple ground planes with the die
paddle in conjunction with the extension” (Ans. 8) (emphasis added). The
Examiner then concluded that “[t]he ordinary artisan would have been
motivated to modify Kawai at least for the purpose of using separate analog
and digital grounds (see Andric Col. 3, lines 43-47 and Muyshondt, Col. 1,
lines 17-26)” (Ans. 9).
Appellants’ argument, focusing on Kawai, does not rebut the
Examiner’s rationale for modifying Kawai, based on Andric and Muyshondt,
to arrive at the argued limitation - “multiple ground planes with the die
paddle” as recited in claim 9. The Examiner’s rationale constitutes an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,’” KSR, 550 U.S. at 418 (2007) (quoting Kahn,
441 F.3d at 988). (For example, Appellants do not explain why Kawai’s
multiple ground connection leads 143, connected to the die pad 146 (i.e.,
“paddle”) according to Appellants’ argument, cannot be connected further to
“multiple ground planes” and thereby connected “with the die paddle.”)
Remaining Claims 16-20
With respect to the obviousness rejection of claims 16-18 and 20
based on the combination of Kawai and Lee, Appellants (App. Br. 22-23)
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rely on, and track, similar arguments presented for claims 1, 6, and 11, and
also repeat certain claim limitations, thereby failing to demonstrate error.
With respect to the obviousness rejection of claim 19 based on the
combination of Kawai, Lee, Andric, and Muyshondt, Appellants (App. Br.
23-24) rely on similar arguments presented for claim 9, and upon arguments
presented for claim 11, with nominal arguments added. Therefore, for the
reasons explained above, we will also sustain the Examiner’s rejection of
these remaining claims. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987).

CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding
that: claim 1 reads on Kawai’s integrated package system, including the
process limitation of “fusing;” Kawai teaches “wherein the extension
depopulate [sic] the instances of the inner terminal pads used to form the
extension” as recited in claim 6; and that Kawai, Andric, and Muyshondt
collectively teach “multiple ground planes with the die paddle” as required
by claim 9.

DECISION
We affirm the Examiner’s decision rejecting claims 1-2, 6-12, and 16-
20.
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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