Ex Parte Shenoy et al

Patent Trial and Appeal Board

May 17, 2018

13418834 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/418,834 03/13/2012 Ravindra V. Shenoy
79659 7590 05/21/2018
Weaver Austin Villeneuve & Sampson LLP - QUAL
Attn: QUAL
P.O. Box 70250
Oakland, CA 94612-0250
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.
QUALP107/ll l 110 2325
EXAMINER
CUNNINGHAM, XANTHIA C
ART UNIT PAPER NUMBER
2835
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
USPTO@wavsip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RA VINDRA V. SHENOY,
DAVID WILLIAM BURNS,
and EVGENI P. GOUSEV
Appeal2017-004607
Application 13/418,834 1
Technology Center 2800
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
MONTE T. SQUIRE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 10-20 and 24--43, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The real party in interest is said to be Qualcomm MEMS Technologies, Inc.
Appeal Brief dated December 4, 2015 ("App. Br."), at 3.
Appeal2017-004607
Application 13/418,834
The claims on appeal are directed to an interposer comprising an additive
glass interposer layer and one or more interconnect posts extending through the
additive glass interposer layer. The Appellants disclose that "[a Jn additive glass
interposer layer is any interposer layer formed by solidifying a flowable dielectric
material such as a dispensable glass or epoxy around one or more interconnect
posts of the interposer layer." Spec. i-f 36 (emphasis added).
Representative claims 10 and 34 are reproduced below from the Claims
Appendix of the Appeal Brief. The limitations at issue are italicized.
10. An interposer comprising:
an additive glass interposer layer, wherein the additive glass
interposer layer is made of a solidified flowable dielectric material;
and
one or more metal interconnect posts extending through the
additive glass interposer layer, the one or more metal interconnect
posts defining one or more through-glass vias in the additive glass
interposer layer, the solidified flowable dielectric material
surrounding the one or more metal interconnect posts.
App. Br. 27.
34. An apparatus, comprising:
an interposer, wherein the interposer is formed by forming a
plurality of interconnect posts on a sacrificial layer, the sacrificial
layer formed on a carrier substrate; depositing and solidifj;ing one or
more jlowable dielectric layers around a substantial entirety of the
interconnect posts such that the interconnect posts define a plurality of
vias in the interposer; planarizing the solidified dielectric material to
expose the interconnect posts; and releasing the interposer from the
carrier substrate by sacrificially etching the sacrificial layer.
App. Br. 30.
The Examiner maintains the following rejections on appeal:
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Application 13/418,834
(1) claims 10-17, 34, 35, and 37--43 under 35 U.S.C. § 103(a) as
unpatentable over Yu et al. 2 in view of Lee et al. 3 and Hu et al.; 4
(2) claim 18 under 35 U.S.C. § 103(a) as unpatentable over Yu in view
Lee and Hu, and further in view of Marimuthu et al.; 5
(3) claims 19, 20, and 24--28 under 35 U.S.C. § 103(a) as unpatentable
over Yu in view of Lee and Hu, and further of Crisp et al.; 6
(4) claims 29--33 under 35 U.S.C. § 103(a) as unpatentable over Yu in
view of Lee and Hu, and further in view of Mehi et al.; 7 and
(5) claim 36 under 35 U.S.C. § 103(a) as unpatentable over Yu in view of
Lee and Hu, and further in view of Racz et al. 8
B. DISCUSSION
1. Claims 10-15, 17-20, and 24--43
There is no dispute on this record that Yu discloses a glass interposer. Final
Act. 3; 9 App. Br. 12 (citing Yu i-f 16). 10 Thus, except for claim 16, the dispositive
issue on appeal is whether the claim term "solidified" or the claimed step of
"solidifying" and the claim term "flowable" patentably distinguish the claimed
glass interposer layer from the glass interposer described in Yu.
2 US 2011/0278732 Al, published November 17, 2011 ("Yu").
3 US 2009/0298257 Al, published December 3, 2009 ("Lee").
4 US 2012/0146209 Al, published June 14, 2012 ("Hu").
5 US 2010/0133704 Al, published June 3, 2010 ("Marimuthu").
6 US 7,317,249 B2, issued January 8, 2008 ("Crisp").
7 US 2007/0239001 Al, published October 11, 2007 ("Mehi").
8 US 2009/0250249 Al, published October 8, 2009 ("Racz").
9 Final Action dated May 13, 2015.
10 Yu discloses that the interposer or substrate may be etched to form through-
substrate vias, implying that the glass is in a solid state. Yu i-f 19.
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Application 13/418,834
The Examiner concludes that the claim terms "solidified" and "flowable"
"speak[] to the method of making the [interposer] layer which is not germane to
the structural limitations of the apparatus." 11 Ans. 2. 12 The Examiner's conclusion
is supported by the record.
"In order to be patentable, a product must be novel, useful and unobvious.
In our law, this is true whether the product is claimed by describing it, or by listing
the process steps used to obtain it." In re Brown, 459 F.2d 531, 535 (CCPA 1972).
However, "it is the patentability of the product claimed and not of the recited
process steps which must be established. Id. Thus, "[ w ]here a product-by-process
claim is rejected over a prior art product that appears to be identical, although
produced by a different process, the burden is upon the applicants to come forward
with evidence establishing an unobvious difference between the claimed product
and the prior art product." In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
The Appellants disclose that "[ e ]xamples of suitable flowable dielectric
materials can include epoxies and spin-on dielectrics, such as spin-on glasses."
Spec. i-f 95. The Appellants disclose:
A spin-on dielectric refers to any solid dielectric deposited by a
spin-on deposition process, which also may be referred to as a spin
coating process. In a spin-on deposition process, a liquid solution
containing dielectric precursors in a solvent is dispensed on the
sacrificial layer . . . . The carrier substrate ... may be rotated while or
after the solution is dispensed to facilitate uniform distribution of the
liquid solution during rotation by centrifugal forces. Rotation speeds
of up to about 6000 rpm may be used. Spin-on dielectrics can also
include dielectrics formed by dispensing, extruding or casting a liquid
11 Likewise, the term "additive" in claims 10 and 24 describes the process of
making the interposer. Spec. i-f 36; see also App. Br. 4 ("An additive glass
interposer layer can relate to additive processes that form the interposer layer.").
12 Examiner's Answer dated July 14, 2016.
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Application 13/418,834
solution without subsequent spinning. . . . The dispensed solution can
then be subjected to one or more post-dispensation operations to
remove the solvent and form the solid dielectric layer.
Spec. i-f 96 (emphasis added).
Based on the foregoing, a preponderance of the evidence supports a finding
that the glass interposer described in Yu is in a solid state and in the case of spin-
on glasses, the Appellants' glass interposer layer is in a solid state after the post-
dispensation operations are complete. Therefore, the term "solidified" or the step
of "solidifying" and the term "flowable" do not patentably distinguish the
Appellants' glass interposer layer from Yu' s glass interposer in the claims on
appeal.
The§ 103(a) rejections of claims 10-15, 17-20, and 24--43 are sustained. 13
2. Claim 16
Claim 16 depends from claim 10 and recites that "the glass interposer layer
has a thickness between about 10 and 500 microns." App. Br. 28. The Examiner
explains:
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to incorporate a glass interposer
layer having a thickness between about 10 and 500 microns.
One having ordinary skill in the art would have been motivated
to do this because it has been held that discovering an optimum value
of a result effective variable involves only routine skill in the art.
Final Act. 5.
To the extent that the Appellants question whether the claimed thickness is
rendered obvious by the prior art of record (see App. Br. 18; Reply Br. 814), the
13 See In re Kalm, 378 F.2d 959, 962 (CCPA 1967) (anticipation is the epitome of
obviousness).
14 Reply Brief dated January 26, 2017.
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Application 13/418,834
Examiner finds that paragraph 21 of Hu discloses that through-holed interposers
were known to have a thickness between 75 µm and 150 µm. Ans. 4. The
Appellants appear to recognize as much. Reply Br. 10.
The range disclosed in Hu is encompassed by the claimed range. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness
typically exists when a claimed range overlaps a range disclosed in the prior art).
Therefore, a preponderance of the evidence supports the Examiner's conclusion
that the thickness recited in claim 16 would have been obvious to one of ordinary
skill in the art based on the prior art of record.
The§ 103(a) rejection of claim 16 is sustained.
C. 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).
AFFIRMED
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