Ex Parte Shah

Patent Trial and Appeal Board

Dec 31, 2012

11685908 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/685,908 03/14/2007 Amip J. Shah ITL.1842US (P25306) 5449
47795 7590 12/31/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
PHAM, THANH V
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
12/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIP J. SHAH
____________

Appeal 2010-008493
Application 11/685,908
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008493
Application 11/685,908

2
STATEMENT OF THE CASE
Appellant is appealing claim 6. Appeal Brief 5. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
The invention is directed to a semiconductor apparatus wherein a die
is positioned between two die. Appeal Brief 8.

Illustrative Claim
6. The apparatus of claim 1, including a third die over said
second die, wherein the first die and the third die are to protect
the second die from heat induced bit erasure during a packaging
process.

Rejections on Appeal
Claim 6 stands rejected under 35 U.S.C. §102(b) as being anticipated
by Lo (U.S. Patent Number 6,414,384 B1; issued July 2, 2002). Answer 4.
Claim 6 stands rejected under 35 U.S.C. §102(b) as being anticipated
by Lee (U.S. Patent Number 6,919,628 B2; issued July 19, 2005). Answer
4-5.

Issue on Appeal
Is claim 6 properly anticipated by Lo?

ANALYSIS
Appellant contends that:
Appeal 2010-008493
Application 11/685,908

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In the Advisory Action, without explanation, the
Examiner apparently claims that even without the
improper refusal to give limitations in the claim weight,
the reference still anticipates. However, the Examiner has
never explained how this is so and it is not incumbent
upon the Applicant to devine [sic], without guidance, the
basis for the Examiner's reasoning. Thus, the Applicant
will wait to see if the Examiner clarifies the basis for the
rejection and, if so, will respond in the reply.

Therefore, the rejection should be reversed.

Appeal Brief 11.
The Examiner finds that Lo discloses a semiconductor apparatus
having a first die 406 mounted on a substrate 402, a third die 408 and a
second die 420 mounted there between the first and third dies. Answer 4.
Appellant argues:
With respect to the prior art rejection, the cited
reference to Lo does not include two dummy chips
sandwiching one functional chip. Instead, it includes two
functional chips sandwiching one dummy chip 420. The
two functional chips are 406 and 408. Thus, the first and
third die are not to protect the second die because the
second die is a dummy die. See column 4, lines 67 of Lo.
Reply Brief 1.
We agree with Appellant’s assessment of the physical configuration
of Lo’s apparatus, however, we do not find Appellant’s arguments to be
persuasive because the arguments are not commensurate with the scope of
the claim. Claim 6 does not distinguish between functioning chips and non-
functioning chips; claim 6 only recites die arrangement without such
distinctions. Further, we note that the argued feature merely pertains to a
statement of intended use “to protect the second die from heat induced bit
Appeal 2010-008493
Application 11/685,908

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erasure during a packaging process” (claim 6) “An ] intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). For patentability, apparatus claims must be
distinguished from the prior art in terms of structure rather than function.
See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Thus, even if
a prior art device is used for a different purpose, it will nevertheless fully
meet a recited apparatus if it contains all claimed structural features and is
capable of performing the intended function. See Id.
Therefore we sustain the Examiner’s rejection of claim 6 as being
anticipated by Lo. We do not address the Examiner’s anticipation rejection
of claim 6 by Lee since we have reached a decision on claim 6 based on the
merits in view of Lo.

DECISION
The rejection of claim 6 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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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