Ex Parte Saeki et al

Patent Trials and Appeals Board

Aug 22, 2018

14117624 - (D) (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/117,624 11/13/2013
53080 7590 08/24/2018
McDermott Will and Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Tsubasa Saeki
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
043888-0986 4380
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
08/24/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUBASA SAEKI, YOSHIYUKI WADA,
KOJI MOTOMURA, and TADAHIKO SAKAI
Appeal2017-010051
Application 14/117,624
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4--8, and 12. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Panasonic Intellectual Property
Management Co., LTD. Appeal Brief of March 21, 2017 ("App. Br."), 1. In
this opinion, we also refer to the Final Action of October 13, 2016 ("Final
Act."), the Examiner's Answer of May 19, 2017 ("Ans."), and the Reply
Brief of July 19, 2017 ("Reply Br.").
Appeal2017-010051
Application 14/117,624
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An electronic component mounting method comprising
the steps of:
providing a first electronic component having a principal
surface provided with a plurality of bumps, the plurality of
bumps including a set of bumps forming an outermost perimeter
of bumps;
providing a substrate having a plurality of first electrodes
corresponding to the plurality of bumps;
applying flux to the plurality of bumps;
placing the first electronic component on the substrate
such that the bumps land on the corresponding first electrodes
via the flux;
the flux being in contact with both the bumps and the first
electrodes;
dispensing a thermosetting resin onto only reinforcement
positions on the substrate with the first electronic component
placed thereon so as to maintain the contact between the flux and
both the bumps and the first electrodes, the reinforcement
positions corresponding to a peripheral edge portion of the first
electronic component, the thermosetting resin dispensed so as to
come in contact with the peripheral edge portion and only a
portion of the set of bumps forming the outermost perimeter of
bumps; and
heating the substrate with the first electronic component
placed thereon, to melt the bumps and cure the thermosetting
resin, followed by cooling, thereby to join the first electronic
component to the substrate.
App. Br. 10 (Claims Appendix).
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Appeal2017-010051
Application 14/117,624
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Sakami
Oshima
Takizawa
JP 08-298374
JP 11-274235
US 2008/0303145 Al
Dec. 11, 1996
Aug. 10, 1999
Dec. 11, 2008
REJECTIONS
The Examiner rejects claims 1, 4--8, and 12 for failure to comply with
the written description requirement under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph. Final Act. 2.
The Examiner rejects claims 1, 4--8, and 12 under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Sakami, in view of Oshima and Takizawa.
Final Act. 3-7.
OPINION
Written Description
The Examiner finds claims 1 and 12, as well as claims 4--8 by virtue
of their dependency from claim 1, 2 fail to meet the written description
requirement because the specification lacks support for the limitation
"dispensing a thermosetting resin onto only reinforcement positions on the
substrate with the first electronic component placed thereon so as to
maintain the contact between the flux and both the bumps and the first
electrodes," as recited in claims 1 and 12. Final Act. 2. The Examiner finds,
2 Appellants argue claims 1, 4--8, and 12 as a group based on the limitation
at issue recited in claim 1. App. Br. 3--4. Claims 4--8 and 12 therefore stand
or fall with claim 1 for the written description rejection. See id.; see also 37
C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 14/117,624
among others, that "[i]t is unknown [to] what environment this limitation
applies and to what degree this maintaining of contact is intended." Ans. 3.
Appellants cite Fig. 2(e) and paragraphs 5, 26, 49, 51, and 52 in the
specification as support for the limitation at issue. App. Br. 4. Appellants
argue that "the specification makes clear that the thermosetting resin
functions to improve the joint strength of the connection formed by the
bump, flux and first electrode" but do not explain how improvement of the
joint strength relates to the claim limitation at issue. Id ( emphasis in
original). Appellants argue that the written description requirement is met
because "claim 1 only requires that the thermosetting resin 105 be in contact
with the flux 206, the bumps 204 and the first electrodes 102a prior to the
heating step so as to maintain the contact between the flux and both the
bumps and the first electrodes." Reply Br. 2.
These arguments, however, do not address the claim limitation at
issue. Claim 1 does not recite any improvement to "the joint strength" or
"the thermosetting resin ... be in contact ... prior to the heating step so as
to maintain the contact" as argued by Appellants. See App. Br. 4; see also
Reply Br. 2. Nor do the arguments address the Examiner's finding that the
written description is incomplete because it does not fully describe "the
parameters" of this limitation. Compare Ans. 3, with Reply Br. 2.
For the reasons set forth above, we sustain the Examiner's rejection
under 35 U.S.C. § 112, ,r 1 for failure to comply with the written description
requirement.
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Appeal2017-010051
Application 14/117,624
Obviousness
Appellants argue that the Examiner erred in rejecting claim 13 for
obviousness because, according to Appellants, a skilled artisan "would not
be motivated to utilize the selected teachings of the prior art references ...
without utilizing the Applicant's claim as a blue print." App. Br. 5
( emphases removed). More specifically, Appellants argue that "Oshima
teaches that the resin completely fills the space between the chip and the
substrate without any void" and the skilled artisan would not have combined
Oshima's teaching with Takizawa's teaching of locally applying the resin.
Id. at 6; see Reply Br. 6. The portions of Oshima cited by Appellants-
paragraphs 16, 18, 29, and 30--do not, however, application of the resin
"without any void[s]" as argued by Appellants. See Oshima ,r,r 16, 18, 29,
30. Appellants argue that Oshima "discloses the resin being dispensed after
the components are mounted" whereas Takizawa "discloses dispensing resin
in a limited peripheral area prior to mounting the components," but do not
adequately explain why the order in which the resin is applied in Oshima
shows that the process in Oshima is one that applies the resin "without any
void[s]." App. Br. 5 (emphases removed). Appellants also do not identify
reversible error in the Examiner's finding that a skilled artisan would find
the recited process obvious because dispensing the resin both before and
after mounting the components are known in the prior art and claim 1 "is
nothing more than a rearrangement" of these prior art steps. Compare Final
Act. 4, with_Reply Br. 3--4. To the extent that Takizawa discloses a process
3 Appellants do not present arguments separate from those for claim 1 for the
obviousness rejection. App. Br. 8. Claim 12 and all remaining dependent
claims, namely, claims 4--8 therefore stand or fall with claim 1 for the
obviousness rejection. See id.; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 14/117,624
with an order of steps not entirely identical to those of Oshima, Appellants
have not shown that such a rearrangement of steps is beyond "a predictable
variation [ of a known work]" which is within the ordinary skill to
implement. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
Moreover, Appellants do not identify error in the Examiner's finding
that "Takizawa teaches that applying the thermosetting flux resin to fill the
entire space between a rectangular chip and substrate, as Oshima does, can
lead to the solder portions breaking." Compare Final Act. 5, with App. Br. 5
(asserting that the obviousness rejection is based on "selected" prior art
teaching). Appellants do not identify error in the Examiner's finding that
"Oshima also teaches the resin strengthens the bonding connection, an
improvement in resin sealing reliability, and a shortened production time."
Compare Ans. 5, with Reply Br. 3--4.
Appellants also do not identify error in the Examiner's finding that
given the prior art teaching in Sakami, Oshima, and Takizawa as a whole,
which forms the basis of the obviousness rejection, the skilled artisan would
necessarily combine the teachings of Oshima and Takizawa because "one
could not directly apply the Takizawa process to Sakami since the
application of resin prior to the application of flux would prevent the flux
from being applied to circuit patterns." Compare Ans. 5, with Reply Br. 3-
4. That is, Appellants argue in favor of non-obviousness by reading the
references in isolation instead of the teaching of all three references a whole.
See Ans. 5; see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
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Application 14/117,624
isolation, but for what it fairly teaches in combination with the prior art as a
whole.").
Lastly, Appellants argue that a skilled artisan would not modify
Oshima's process because Takizawa seeks to improve various characteristics
of "a large-sized semiconductor package" which differs from the "small
sized semiconductor chip" used in Oshima's process. App. Br. 7 (citing
Takizawa ,r 9). It is unclear from Appellants' argument what size is
considered "small" in semiconductor chips as opposed to "large" in
semiconductor packages. See id. Appellants' argument is based on both
"large sized semiconductor" and "large-sized semiconductor package" but
does not clearly explain whether a skilled artisan would not combine the
references because of the size differences or the differences between a
"semiconductor" and a "semiconductor package." See id. Appellants'
statement that "the electronic component disclosed in Oshima is not a large
sized semiconductor but is a small sized semiconductor chip" whereas
Takizawa "has been widely applied to small sized semiconductor chips of
some millimeters square" does not support their argument that a skilled
artisan would not combine the references based on the size difference in the
prior art. App. Br. 7 .. Appellants' argument regarding the size difference
of the semiconductor does not provide any citation to Oshima. See App. Br.
7. As the Examiner finds, and Appellants do not dispute, "Oshima gives no
sizes." Compare Ans. 5, with Reply Br. 4. Appellants' argument that
Oshima's process uses a particular size of semiconductor is therefore not
supported by evidence in the record. For these reasons, Appellants'
argument with regard to the size of the semiconductor does not show that it
is beyond a skilled artisan's ability to implement a predictable variation of
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Application 14/117,624
the prior art, see KSR, 550 U.S. at 417, nor does it identify reversible error in
the Examiner's rationale that a skilled artisan would have combined the
references because both "teach[] that applying the thermosetting flux resin to
fill the entire space between a rectangular chip and substrate ... can lead to
the solder portions breaking." Compare Final Act. 5, with App. Br. 7.
DECISION
The Examiner's decision 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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