Ex Parte Schroen

Board of Patent Appeals and Interferences

May 14, 2004

09531671 (B.P.A.I. May. 14, 2004)

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not written for publication and is not binding precedent of the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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WALTER H. SCHROEN
__________
Appeal No. 2004-0700
Application No. 09/531,671
__________
ON BRIEF
__________
Before GARRIS, PAK, and KRATZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the non-final rejection
of claims 14-22 and 24-39 which are all of the claims remaining
in the application.
The subject matter on appeal relates to a method of
packaging integrated circuits comprising the steps of (1)
providing a plurality of integrated circuit chips, each chip
Appeal No. 2004-0700
Application No. 09/531,671
2
having a surface and a periphery, and a sheet of lead frames and
(ii) encapsulating the integrated circuits and at least a portion
of each lead frame, each encapsulated integrated circuit and
opposing lead frame forming a discrete integrated circuit
package. Further details of this appealed subject matter are set
forth in representative independent claim 14 which reads as
follows:
14. A method of packaging integrated circuits, comprising
the steps of:
providing a plurality of integrated circuit chips, each chip
having a surface and a periphery, and a sheet of lead frames;
disposing said sheet of lead frames opposite said plurality
of integrated circuit chips, each integrated circuit chip
disposed opposite one of said lead frames, each integrated
circuit chip including an integrated circuit therein, each lead
frame including leads, the entire lead frame and leads disposed
within said periphery of said opposing integrated circuit chip;
electrically coupling the leads of each lead frame to the
opposing integrated circuit chip; and
encapsulating the integrated circuits and at least a portion
of each lead frame, each encapsulated integrated circuit and
opposing lead frame forming a discrete integrated circuit
package.
The references set forth below are relied upon by the
examiner in the section 102 and section 103 rejections before us:
Olla et al. (Olla) 4,743,956 May 10, 1988
Sato et al. (Sato) 5,519,251 May 21, 1996
Khandros et al. (Khandros) 5,685,885 Nov. 11, 1997
(filed Oct. 7, 1994)
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Application No. 09/531,671
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Nishizawa et al. (Nishizawa) 5,910,010 Jun. 8, 1999
(PCT filed Apr. 5, 1995)
Claims 14, 15, 17, 18, 21, 25, 26 and 31-33 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Khandros.
Claims 16, 22, 27-29, 34 and 35 as well as claims 37 and 38
stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Khandros in view of Sato.
The remaining claims on appeal stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Khandros in various
combinations with the other references listed above.
As indicated on page 4 of the brief (i.e., the supplemental
appeal brief filed May 5, 2003, as Paper No. 22), certain of the
appealed claims have been separately grouped by the appellant.
In our disposition of this appeal, we have individually
considered these separately grouped claims to the extent that
they also have been separately argued. See Ex parte Schier, 21
USPQ2d 1016, 1018 (Bd. Pat. App. & Int. 1991). Also see 37 CFR
§ 1.192(c)(7)(2002).
Rather than reiterate the respective positions advocated by
the appellant and by the examiner, we refer to the aforementioned
brief and to the answer for a complete exposition thereof.
Appeal No. 2004-0700
Application No. 09/531,671
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OPINION
For the reasons which follow, we will sustain each of the
rejections advanced by the examiner on this appeal.
We share the examiner’s finding that appealed independent
claim 14 is anticipated by the Figure 32 disclosure of Khandros.
According to the appellant, Khandros fails to disclose the here
claimed encapsulating step. The appellant describes his position
on this matter in the paragraph bridging pages 4 and 5 of the
brief with the language set forth below:
Khandros does not disclose such a feature [i.e., the
encapsulating step of claim 14]. See Figure 2, column
11, lines 14-18 of Khandros where the encapsulant 60
covers only the junctures of the leads 50 with the
contacts 40. See also Figure 32, column 17, line 3
where only the leads are mentioned as being
encapsulated. The encapsulant therefore does not
encase or enclose the integrated circuit and leadframe.
The appellant’s position is not well taken. Khandros’s step
of encapsulating his leads (see Figure 32 and the paragraph
bridging columns 16 and 17 in comparison with Figure 2 and the
disclosure relating thereto) would necessarily and inherently
also encapsulate or cover at least a portion of the integrated
circuits to which these leads are connected. It may be the
appellant considers appealed claim 14 to require that the entire,
rather than at least a portion, of the integrated circuit be
encapsulated or covered as shown in Figures 1D and 1E of his
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Application No. 09/531,671
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drawing. However, neither claim 14 nor any of the other argued
claims on appeal contains any such requirement.
We here emphasize that, during examination proceedings,
claims are to be given their broadest reasonable interpretation
consistent with the specification. In re Hyatt, 211 F.3d 1367,
1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Similarly, while
claims are to be interpreted in light of the specification,
limitations from the specification are not to be read into the
claims. Comack Communications, Inc. v. Harris Corp., 156 F.3d
1182, 1186, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998).
Here, it is indisputable that appealed claim 14 does not
expressly require encapsulating the entire exposed surfaces of
the integrated circuits as shown, for example, in the appellant’s
drawing. Moreover, the fact that claim 14 explicitly recites
“encapsulating . . . at least a portion of each lead frame”
(emphasis added) evinces that it is proper to interpret the here
claimed encapsulating step as encompassing embodiments wherein
only a portion of the feature in question is encapsulated or
covered. A more narrow interpretation would involve the
impermissible practice of reading limitations from the
appellant’s specification and drawing disclosure into the
appealed claim. Id.
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Application No. 09/531,671
6
Under these circumstances, we, like the examiner, find that
claim 14 is anticipated by Khandros (i.e., patentee’s express as
well as inherent disclosure) wherein at least a portion of the
integrated circuits and lead frames are encapsulated or covered.
We also share the examiner’s finding that appealed dependent
claim 15 is anticipated by Khandros wherein patentee’s sheet of
lead frames comprises a composite of metal and interposer
material. In the appellant’s view, “anything in Khandros that
can reasonably be called a ‘lead frame’ is not a unitary sheet of
material, but is rather a composite of metal on a sheetlike
dielectric [i.e., the interposer of Khandros]” (brief, page 5).
As correctly explained by the examiner in the paragraph bridging
pages 13 and 14 of the answer, the appellant’s claimed unitary
sheet of material is not limited to only a single type of
material such as metal. Thus, for reasons analogous to those
discussed above, it is appropriate to interpret claim 15 as
encompassing a unitary sheet of composite material such as the
metal/interposer composite of Khandros. See In re Hyatt, 211
F.3d at 1772, 54 USPQ2d at 1667 and Comack Communications, Inc.
v. Harris Corp., 156 F.3d at 1186, 48 USPQ2d at 1005.
Finally, like the examiner, we also reach a finding of
anticipation with respect to argued claims 21, 25 and 31-33. The
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Application No. 09/531,671
1 Significantly, the appellant has not filed a reply brief
in response to this answer and thus has not disagreed on the
record before us with the examiner’s explanation.
7
features of these claims correspond to those previously
considered, and the appellant’s arguments with respect thereto
are unpersuasive for reasons analogous to those previously
explained.
In light of the foregoing, we hereby sustain the examiner’s
section 102 rejection of claims 14, 15, 17, 18, 21, 25, 26 and
31-33 as being anticipated by Khandros.
The only other arguments advanced by the appellant on this
appeal concern the section 103 rejection of claims 27, 37 and 38
as being unpatentable over Khandros in view of Sato. As
explained by the examiner on pages 14 and 15 of the answer,1
these arguments are not relevant to the examiner’s proposed
combination of Khandros and Sato. Furthermore, we consider the
examiner to have established a prima facie case of obviousness
with respect to this proposed combination. It is our ultimate
determination, therefore, that the examiner has established a
prima facie case of obviousness with respect to the claims under
review which the appellant has failed to successfully rebut with
argument and/or evidence of nonobviousness. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appeal No. 2004-0700
Application No. 09/531,671
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It follows that we also hereby sustain the examiner’s
section 103 rejection of claims 16, 22, 27-29, 34, 35, 37 and 38
as being unpatentable over Khandros in view of Sato.
The other section 103 rejections advanced by the examiner
have not been separately contested by the appellant on this
appeal. See In re Dance, 160 F.3d 1339, 1340, n.2, 48 USPQ2d
1635, 1636, n.2 (Fed. Cir. 1998) and In re Nielson, 816 F.2d
1567, 1571, 2 USPQ2d 1525, 1528; compare In re McDaniel, 293 F.3d
1379, 1382-85, 63 USPQ2d 1462, 1464-66 (Fed. Cir. 2002). Thus,
we likewise hereby sustain these section 103 rejections for
reasons which correspond to those earlier stated.
The decision of the examiner is affirmed.
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Application No. 09/531,671
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Chung K. Pak ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Peter F. Kratz )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2004-0700
Application No. 09/531,671
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Texas Instruments Incorporated
P.O. Box 655474, M/S 3999
Dallas, TX 75265