Ex Parte Shim et al

Patent Trial and Appeal Board

May 30, 2018

12777615 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121777,615
127614 7590
Wong & Rees LLP
FILING DATE
05/11/2010
06/01/2018
4340 Stevens Creek Blvd.
Suite 106
San Jose, CA 95129
FIRST NAMED INVENTOR
II Kwon Shim
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.
70027-1518 4727
EXAMINER
YEMELYANOV, DMITRIY
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
docketing@wongrees.com
jyang@wongrees.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IL KWON SHIM,
SENG GUAN CHOW,
and HEAP HOE KUAN
Appeal2017-006735
Application 12/777,615
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, 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 from the
Examiner's decision finally rejecting claims 12, 15, 16, 18, 19, and 22. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Claims 1, 4, 5, 7-9, and 11 are also pending but have been withdrawn from
consideration.
Appeal2017-006735
Application 12/777,615
The claimed subject matter is directed to an integrated circuit
packaging system. The claimed system comprises, inter alia, an
interconnect having a first coined-surface, an encapsulation encapsulating
the interconnect, and a joint having a second coined-surface adhered in
direct contact with the first coined-surface of the interconnect. The joint
includes a single structure having at-shape with a vertical portion directly
connected to a horizontal portion. The first coined-surface of the
interconnect is based on the vertical portion of the joint submerged in the
interconnect. See, e.g., Fig. 1.
Independent claim 12 is reproduced below from the Claims Appendix
of the Amended Appeal Brief dated April 27, 2017 ("App. Br.").
12. An integrated circuit packaging system comprising:
a substrate having a perimeter and a center portion;
an interconnect attached to the substrate, the interconnect
having a first coined-surface;
an encapsulation encapsulating the interconnect;
a joint above the encapsulation, the joint having a second
coined-surface adhered in direct contact with the first coined-
surface, wherein the joint includes a single structure having at-
shape with a vertical portion directly connected to a horizontal
portion, the interconnect having the first coined-surface is based
on the vertical portion submerged in the interconnect, the first
coined-surface is entirely directly on the vertical portion, and
the first coined-surface includes a structure with a work-
hardened surface at an acute angle below the top surface of the
encapsulation; and
an integrated circuit is attached to the center portion of
the substrate.
App. Br. 21.
2
Appeal2017-006735
Application 12/777,615
The Examiner maintains the following grounds of rejection on
appeal: 2
(1) claim 15 under 35 U.S.C. § 112, second paragraph, as
indefinite;
(2) claims 12, 15, 16, 18, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Chow et al. 3 in view of Rothman et al.; 4 and
(3) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Chow
in view of Rothman, and further in view of Pagaila et al. 5
B. DISCUSSION
1. Rejection (1)
Claim 12 recites that "the joint includes a single structure having at-
shape" and claim 15, which depends from claim 12, recites that "the joint is
2 The Examiner also objected to an Amendment to the Specification filed
July 9, 2015, under 35 U.S.C. § 132(a) as introducing new matter into the
disclosure and required the Appellants to cancel the new matter. Final
Office Action dated August 19, 2015 ("Final Act."), at 2. According to
MPEP § 608.04( c) (9th ed., Rev. Aug. 2017), "[ w ]here the new matter is
confined to amendments to the specification, review of the examiner's
requirement for cancelation is by way of petition. But where the alleged
new matter is introduced into or affects the claims, thus necessitating their
rejection on this ground, the question becomes an appealable one .... " See
also MPEP § 1201 (petitionable matters are not appealable). In this case, the
Examiner did not enter a corresponding rejection of the claims under
35 U.S.C. § 112, first paragraph, based on the written description
requirement. Therefore, the Examiner's requirement to cancel the new
matter from the Appellants' Specification is a petitionable matter.
3 US 200710190690 Al, published August 16, 2007 ("Chow").
4 US 2009/0065943 Al, published March 12, 2009 ("Rothman").
5 US 2010/0033941 Al, published February 11, 2010 ("Pagaila").
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Appeal2017-006735
Application 12/777,615
a flat-shaped joint, a diamond-shaped joint, or a combination thereof." App.
Br. 21.
The Examiner finds that the Appellants describe three separate
embodiments of a joint, i.e., t-shaped joint 120 illustrated in Figure 1, 6 flat
shaped joint 320 illustrated in Figure 3, 7 and diamond-shaped joint 420
illustrated in Figure 4. 8 Ans. 3-5. 9 The Examiner explains that it is not
clear how a joint can be flat shaped as recited in claim 15 and illustrated in
Figure 3 and "at the same time" bet-shaped as recited in claim 12 and
illustrated in Figure 1. Therefore, the Examiner concludes that claim 15 is
indefinite. Ans. 6. The Appellants do not offer a response.
A review of the Appellants' Specification 10 reveals that the term "flat
shaped" is limited to describing joint 320 in Figure 3. Spec. i-f 55; see also
Ans. 6 (citing Spec. i-f 55). Flat shaped joint 320 does not include a vertical
portion, in contrast tot-shaped joint 120 that comprises vertical portion 126
extending from horizontal portion 130. Spec. i-fi-138-39; Fig. 1; see also
Ans. 6. Thus, on this record, we agree with the Examiner that it is not clear
how the t-shapedjoint recited in claim 12 can also be flat-shaped as recited
in claim 15.
The § 112, second paragraph, rejection of claim 15 is sustained.
6 Spec. i-f 38 (disclosing that 'joint 120 is shown to have at-shape").
7 Spec. i-f 55 (disclosing that 'joint 320 is shown to be flat shaped").
8 Spec. i-f 63 (disclosing that 'joint 420 is shown to have a diamond-shape").
9 Examiner's Answer dated August 25, 2016.
10 See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) ("the definiteness of
the [claim] language employed must be analyzed-not in a vacuum, but
always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art").
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Appeal2017-006735
Application 12/777,615
2. Rejections (2}--{3)
The Examiner finds Chow discloses an integrated circuit packaging
system comprising, inter alia, (I) substrate 102, (2) interconnect 108, 702
having a first coined-surface, 11 including a work-hardened surface, 12 (3)
encapsulation 130, 706 encapsulating the interconnect, and (4) joint 212 13
having a second coined-surface. Final Act. 3--4. The Examiner finds Chow
does not expressly disclose that:
the joint includes a single structure having at-shape with a
vertical portion directly connected to a horizontal portion, the
interconnect having the first coined-surface is based on the
vertical portion submerged in the interconnect, the first coined-
surface is entirely directly on the vertical portion, and an acute
angle below the top surface of the encapsulation [as recited in
claim 12].
Final Act. 4 (emphasis added).
The Examiner finds Rothman discloses the claimed elements missing
from Chow, with the exception of the work-hardened surface being at an
acute angle below the top surface of the encapsulation. Final Act. 4, 5. The
Examiner concludes that it would have been obvious to one of ordinary skill
11 See Chow i-f 49 (disclosing that planarization of the interconnects may be
accomplished, for example, with a coining process).
12 The Examiner concludes that "a work-hardened surface" as recited in
claim 12 is a product-by-process limitation. Final Act. 5. The Appellants
disclose that coining "induc[es] a plastic flow in the surface of the
interconnects to form a coined-surface having a very fine grain structure
providing a work-hardened surface while the deeper material in the
interconnects retains its toughness and ductility." Spec. i-f 61 (reference
numerals omitted).
13 Chow Figure 2, relied on by the Examiner, depicts joint 212 as a flat
shaped joint, similar to the Appellants' flat shaped joint 320 illustrated in
Appellants' Figure 3. See Final Act. 3.
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Appeal2017-006735
Application 12/777,615
in the art to modify Chow's system to include the elements from Rothman
"to prevent cracking of one or more of the solder joints and provide a
reliable, cost-effective package substrate structure." Final Act. 4--5 (citing
Rothman i-fi-1 5-6).
As for the acute angle recited in claim 12, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art to further
modify Chow's system, and more specifically the coined-surface of
interconnect 108, 702, "such that an angle is acute in order to arrest a crack
in a solder joint." 14 Final Act. 5 (citing Rothman i-f 19).
The Appellants argue that "the claim limitation of 'the interconnect
having the first coined-surface is based on the interconnect encapsulated by
the encapsulation and the vertical portion submerged in the interconnect' is
not taught or suggested in Chow or Rothman." App. Br. 13 (emphasis
added). In particular, the Appellants argue that Rothman's solder joint or
interconnect 225 "is completely exposed and thus not covered by any
encapsulation." App. Br. 13. As for Chow, the Appellants recognize that
Chow discloses that interconnects 108 are within encapsulant 130. App. Br.
13. Nonetheless, the Appellants argue that Chow's solder joints 212 are
completely on top of interconnects 108 and do not have a vertical portion
14 Claim 12 recites that "the interconnect having the first coined-surface is
based on the vertical portion submerged in the interconnect, the first coined-
surface is entirely directly on the vertical portion, and the first coined-
surface includes a structure with a work-hardened surface at an acute angle
below the top surface of the encapsulation." App. Br. 21 (emphasis added).
We understand the acute angle recited in claim 12 to be that portion of the
first coined-surface in direct contact with pointy tip 128 of vertical portion
126 oft-shaped joint 120 illustrated in Appellants' Figure 1. See Spec. i138.
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Application 12/777,615
submerged in the interconnect as recited in claim 12 (and disclosed in
Rothman). App. Br. 13-14.
The Appellants' arguments are not persuasive of reversible error. It is
well-settled that one cannot show nonobviousness by attacking the
references individually, as the Appellants have done, where, as here, the
rejection is based on a combination of references. In re Keller, 642 F .2d
413, 426 (CCPA 1981). In this case, the Examiner relies on Chow to show
an encapsulation encapsulating the interconnect and an interconnect having a
first coined-surface. The Examiner relies on Rothman to show a joint
having at-shape with a vertical portion directly connected to a horizontal
portion, wherein the joint is submerged in an interconnect. 15 Thus, it is the
combination of Chow and Rothman, and more specifically the replacement
of Chow's flat shaped joint with Rothman's t-shapedjoint, that results in "an
encapsulation encapsulating the interconnect" and the first coined-surface of
the interconnect "based on the vertical portion [of the joint] submerged in
the interconnect" as recited in claim 12. See App. Br. 21.
The Appellants also argue that "the interconnect having the first
coined-surface based on the interconnect encapsulated by the encapsulation
and the vertical portion submerged in the interconnect has been discovered
to provide improved reliability." App. Br. 14.
15 The Examiner also finds Rothman discloses that the interconnects may be
encapsulated in an encapsulant. Ans. 10-11 (citing Rothman i-f 22). In
particular, Rothman discloses that "[a] method embodiment may further
include providing an underfill material between the substrate and the carrier
(not shown)." Rothman i-f 22.
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Application 12/777,615
The Appellants, however, do not direct us to any credible evidence
showing that improved reliability is an unexpected result of the claimed
invention or is the solution to a long-felt need in the art. See In re Schulze,
346 F.2d 600, 602 (CCP A 1965) ("Argument in the brief does not take the
place of evidence in the record."). In that regard, the Examiner finds, and
the Appellants do not dispute, that Rothman teaches that at-shaped joint
provides a reliable structure. Final Act. 4--5 (citing Rothman i-fi-1 5---6); see
also Rothman i1 6.
For the reasons set forth above, the § 103(a) rejection of claim 12 is
sustained.
The Appellants indicate that dependent claims 15, 16, 18, 19, and 22
stand or fall with the patentability of claim 12. App. Br. 18, 19. Therefore,
the§ 103(a) rejection of claims 15, 16, 18, and 22 based on the combination
of Chow and Rothman and the§ 103(a) rejection of claim 19 based on the
combination of Chow, Rothman, and Pagaila also are 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
8