Ex Parte Schrock

Board of Patent Appeals and Interferences

Jul 24, 2003

09292745 (B.P.A.I. Jul. 24, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDWARD A. SCHROCK
_____________
Appeal No. 2003-0543
Application 09/292,745
_______________
HEARD: JULY 16, 2003
_______________
Before RUGGIERO, DIXON, and SAADAT, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final
rejection of claims 1-3, 6-13, 16-18, and 30-34. Claims 4, 5,
14, and 15 have been canceled. Claims 19-29 stand withdrawn from
consideration as being directed to a non-elected invention.
Appeal No. 2003-0543
Application 09/292,745
1 A copy of a translation provided by the U.S. Patent and Trademark
Office, October 2000, is included along with this decision.
2
The claimed invention relates to a semiconductor device
which is provided with copper traces for connecting active
elements to an external device. More particularly, insulating
layers of black oxide (cupric oxide) are formed on the copper
traces, the black oxide functioning as a substitute for the
conventionally used solder resist mask.
Claim 1 is illustrative of the invention and reads as
follows:
1. A semiconductor device, comprising:
semiconductor active elements;
metal traces for connecting said active elements to an
external device, wherein said metal is copper; and
insulating layers on said metal traces, said insulating
layers including black oxide, wherein said black oxide is a
substitute for a solder resist mask.
The Examiner relies on the following prior art:
Ma et al. (Ma) 5,742,483 Apr. 21, 1998
Berg et al. (Berg) 5,756,380 May 26, 1998
Shimazu JP 06-338535 Dec. 06, 1994
(Published Japanese Patent Application)1
Appeal No. 2003-0543
Application 09/292,745
2 The Ma reference, not part of the stated rejection, is cited by the
Examiner as providing evidentiary support for the use of metal oxide as a
solder resist mask.
3 The Appeal Brief was filed March 7, 2002 (Paper No. 20). In response
to the Examiner’s Answer dated April 29, 2002 (Paper No. 21), a Reply Brief
was filed July 1, 2002 (Paper No. 22), which was acknowledged and entered by
the Examiner as indicated in the communication dated September 4, 2002 (Paper
No. 24).
3
Claims 1-3, 6-13, 16-18, and 30-34, all of the appealed
claims, stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Berg in view of Shimazu.2
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the Briefs3 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner, the arguments in
support of the rejection and the evidence of obviousness relied
upon by the Examiner as support for the rejection. We have,
likewise, reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Briefs along
with the Examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the Examiner’s Answer.
Appeal No. 2003-0543
Application 09/292,745
4
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of skill
in the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claims 1-3, 6-13,
16-18, and 30-34. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
Appeal No. 2003-0543
Application 09/292,745
5
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of each of the appealed independent claims 1, 8, 13, 30, and 34,
based on the combination of Berg and Shimazu, Appellant asserts
that the Examiner has failed to establish a prima facie case of
obviousness since all of the claimed limitations are not taught
or suggested by the applied prior art references. In particular,
Appellant contends (Brief, pages 5 and 6; Reply Brief, pages 3
and 4), that neither Berg nor Shimazu has any teaching or
suggestion of using black oxide as a substitute for a solder
resist mask as claimed.
After careful review of the Berg and Shimazu references, in
light of the arguments of record, we are in general agreement
with Appellant’s position as stated in the Briefs. In
particular, in contrast to the Examiner’s position, we find no
teaching or suggestion in Shimazu of the use of black oxide as a
Appeal No. 2003-0543
Application 09/292,745
6
solder resist mask. While Shimazu discloses the use of a “copper
oxide” as a solder mask, we find no basis for the Examiner’s
assertion (Answer, page 8) that “copper oxide” is known to
include both brown oxide (cuprous oxide, Cu2O), which the Examiner
refers to as dicopper oxide, and black oxide (cupric oxide, CuO).
We agree with Appellant that, while dicopper oxide (Cu2O) may
identify brown oxide, the Examiner has provided no evidence to
support the conclusion that “copper oxide,” a term which refers
to the genus of the oxides of copper, would be recognized by a
skilled artisan as referring to the species of copper oxide known
as black oxide (CuO). “[T]he Board cannot simply reach
conclusions based on it own understanding or experience - or on
its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the
record in support of these findings.” In re Zurko, 258 F.3d
1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). See also In
re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.
Cir. 2002), in which the court required evidence for the
determination of unpatentability by clarifying that the
principles of “common knowledge” and “common sense” may only be
applied to analysis of evidence, rather than be a substitute for
Appeal No. 2003-0543
Application 09/292,745
7
evidence. The court has also recently expanded their reasoning
on this topic in In re Thrift, 298 F.3d 1357, 1363, 63 USPQ2d
2002, 2008 (Fed. Cir. 2002).
In our view, contrary to the Examiner’s assertions in
support of the proposed combination, the disclosure of Shimazu
lacks any teaching of the use of black oxide, let alone any
suggestion of the use of black oxide as a substitute for the
solder resist mask in Berg. We also find nothing in the
disclosure of the Ma reference, which provides a general teaching
of the use of a metal oxide as a solder mask, which would suggest
the use of a specific oxide, i.e., black oxide, as claimed.
Since all of the claim limitations are not taught or
suggested by the applied prior art, it is our opinion that the
Examiner has not established a prima facie case of obviousness
with respect to the claims on appeal. Accordingly, we do not
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1, 8, 13, 30, and 34, nor of claims 2, 3, 6,
Appeal No. 2003-0543
Application 09/292,745
8
7, 9-12, 16-18, and 31-33 dependent thereon. Therefore, the
Examiner’s decision rejecting claims 1-3, 6-13, and 16-18, and
30-34 is reversed.
REVERSED

JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JFR/dal
Appeal No. 2003-0543
Application 09/292,745
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