Ex Parte Shiv et al

Patent Trial and Appeal Board

Aug 15, 2016

12430591 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/430,591 0412712009
60601 7590 08/15/2016
Muncy, Geissler, Olds & Lowe, P,C,
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
Lior Shiv
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.
5610/0390PUS2 3426
EXAMINER
HUBER, ROBERT T
ART UNIT PAPER NUMBER
2892
MAILDATE DELIVERY MODE
08/15/2016 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 LIOR SHIV and JOHN NICHOLAS SHEPHERD 1
Appeal2015-002184
Application 12/430,591
Technology Center 2800
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Although Appellants identify Taiwan Semiconductor Manufacturing
Company, Ltd. as the real party in interest (Appeal Brief 3), correspondence
in the prosecution history dated March 30, 2016 states that the application
was subsequently assigned to Epistar Corporation.
2 In our opinion below, we refer to the Final Action mailed January 8, 2014
("Final Act."), the Appeal Brief filed July 10, 2014 ("App. Br."), the
Examiner's Answer mailed September 25, 2014 ("Ans."), and the Reply
Brief ("Reply") filed November 21, 2014.
Appeal2015-002184
Application 12/430,591
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
12-15, 20, 32, and 33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a wafer-level method of fabricating a
submount for a microcomponent. Independent claim 12, reproduced below
with certain limitations italicized for emphasis, is illustrative of the claimed
subject matter:
12. A wafer-level method of fabricating a submount for a
microcomponent, the method comprising:
etching a via in a back-side of a silicon wafer, wherein the
etching is performed from the back-side of the silicon wafer
toward a front-side of the silicon wafer;
etching a cavity in the front-side of the silicon wafer,
wherein a bottom of the cavity is defined by an entirely
continuous membrane portion of the silicon wafer, and side
surfaces of the cavity are defined by a frame portion of the wafer,
wherein the frame portion 1s JOmed with at least two opposite
edges of the membrane portion, and wherein the via extends at
least partially through the frame portion, and wherein the etching
the cavity is performed from the front-side of the silicon wafer
toward the back-side of the silicon wafer;
providing metallization in the via to form an electrically
conductive feed-through connection that extends from the back-
side of the wafer at least partially through a particular sidewall
of the cavity; and
in a step separate from providing metallization in the via,
providing metallization on a surface of the cavity with a
structure separate from the electrically conductive feed-through
connection, wherein electrical connection between the
electrically conductive feed-through connection and the
metallization on the surface of the cavity is made at least partially
through the particular sidewall of the cavity.
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Appeal2015-002184
Application 12/430,591
App. Br. 18 (Claims App'x).
Tseng et al. ("Tseng")
Chen et al. ("Chen")
Higashi et al.
("Higashi")
REFERENCES
US 2007/0090510 Al
US 2008/003 6045 A 1
US 2009/0014735 Al
REJECTIONS
Apr. 26, 2007
Feb. 14,2008
Jan. 15,2009
Independent claim 12 and its dependent claims 13-15, 20, 32, and 33
stand rejected under 35 U.S.C. § 103(a) as obvious over Chen in view of
Tseng and Higashi.
OPINION
Appellants do not argue any claim apart from the others. App. Br. 10.
We select claim 12 as representative to decide the issues on appeal. "[T]he
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." In re Huai-
Hung Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011) (quoting 37 C.F.R.
§ 41.37(c)(l)(vii)).
The Examiner finds that Chen teaches most of the elements of
independent claim 12, but is silent with respect to disclosing certain
elements, for which the Examiner turns to Tseng or Higashi. Final Act. 4--5.
Appellants contend that the references cited by the Examiner fail to teach
every element of the claims. App. Br. 10.
We provide illustrations from the application, Chen, and Tseng to
assist in the reader's understanding of the issues on appeal.
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Application 12/430,591
Figure 1 of the application is reproduced below:
)
Figure 1 is a cross-sectional view of an example semiconductor-based
submount showing cavity (104), thin membrane portion (105), frame portion
(107), cavity metallization (112), and vias (113).
Figure 6A of Chen is reproduced below:
/
33 3
301-'\
~.
302
Figure 6A of Chen is a schematic cross-sectional view of a power
semiconductor device according to an embodiment of the invention in Chen,
showing silicon substrate (3), receiving space (31 ), plural conducting
structures (32), and through holes (34).
Figure 6 of Tseng is reproduced below:
Figure 6 of Tseng is a cross-sectional diagram corresponding to a step of
fabrication in accordance with the invention in Tseng, showing reflective
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Appeal2015-002184
Application 12/430,591
cavity 102 and formation of electrode access holes 104 on the second
surface of the silicon substrate 100.
Figure 11 of Tseng is reproduced below:
150-l
Figure 11 of Tseng is a cross-sectional diagram corresponding to a step of
fabrication in accordance with the invention in Tseng, showing the silicon
substrate ( 100), the top electrodes 140-1 and 140-2, and the bottom
electrodes 150-1and150-2.
Appellants' first complaint addresses the limitation "etching a via in a
back-side of a silicon wafer, wherein the etching is performed from the
back-side of the silicon wafer toward a front-side of the silicon wafer." App.
Br. 11. Regarding Chen, the Final Action states that "the via 34 reaches the
bottom-side of the silicon wafer 3, and therefore may be considered to be
etched in the back-side of the silicon wafer 3." Final Act. 3. Appellants
urge that the Final Action "provides no evidence that Chen actually teaches
that the via 34 is etched from the back-side 302 toward the front-side 301."
App. Br. 11 (emphasis in original). However, the Examiner acknowledges
that Chen does not teach etching "performed from the back-side ... toward
the front side of the silicon wafer," and explains that Tseng, not Chen, was
not relied on for teaching this limitation. Ans. 2. Specifically, the Examiner
states that Tseng discloses the via is etched from the back-side of the silicon
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Application 12/430,591
wafer to the front side. Id. (citing Tseng Fig. 6 and iii! 29 and 31 ).
Appellants do not dispute that Tseng teaches the limitation.
Appellants cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner
properly identified the limitation "etching a via in a back-side of a silicon
wafer, wherein the etching is performed from the back-side of the silicon
wafer toward a front-side of the silicon wafer" in Tseng, and Appellants'
argument that the limitation is missing from Chen is immaterial.
Appellants next contend that Chen teaches forming the via 34 and the
cavity 31 in a single procedure, while independent claim 12 requires two
different etching processes. App. Br. 11. The Examiner counters that claim
12 does not explicitly recite that the via and the cavity are etched in two
different processes, but only that etching takes place starting on both the
back-side and front-side, and Chen in view of Tseng teaches the limitations.
Ans. 3. We agree with the Examiner.
Claim 12 requires etching a via in a back-side of a silicon wafer and
etching a cavity in the front-side of the silicon wafer. App. Br. 18 (Claims
App'x). Although these etching processes are required to take place on
opposite sides of the silicon wafer, we find nothing in the claim---or the
Specification-that precludes the processes from taking place at the same
time or in the same procedure. In addition, the Examiner cites to Tseng as
teaching that the via is etched from the back-side to the front-side, and the
cavity is etched from the front-side to the back-side. Ans. 4. Chen also
teaches etching the silicon wafer starting at the front side. Chen if 29. Thus,
Chen in view of Tseng teach the limitations of"etching a via in a back-side
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Application 12/430,591
of a silicon wafer, wherein the etching is performed from the back-side of
the silicon wafer toward a front-side of the silicon wafer" and "etching a
cavity in the front-side of the silicon wafer, ... wherein the etching the
cavity is performed from the front-side of the silicon wafer toward the back-
side of the silicon wafer." Appellants attempt to establish non-obviousness
by attacking Chen individually where the rejection is based upon the
teachings of a combination of references (Chen and Tseng). See In re Merck
& Co., 800 F .2d at 1097. This attack fails, as the Examiner shows that the
references in combination teach the limitation. See id.
Appellants then argue that one of ordinary skill in the art at the time of
the invention would not have been motivated to modify the references in the
manner proposed by the Examiner. App. Br. 12. Appellants identify three
grounds for claiming that the references teach away from the claimed
combination: (1) Chen teaches forming a via 34 and cavity 31 in a single
etching process, but Tseng teaches two separate etching processes (App. Br.
12 (emphasis in original)); (2) "Chen appears to form the conductive
structures 32 in the through hole 34 and in the cavity 31 at the same time,
not by two separate" steps, as taught by Tseng (id. at 14 (emphasis in
original)); and (3) the through hole 34 in Chen is not completely filled by the
conducting structures 32, while the entire electrode access hole 104 in Tseng
is completely filled by the top (140-1 and 140-2) and bottom (150-1 and
150-2) electrodes (Reply 5---6). We address each of these grounds in tum.
With regard to ground ( 1 ), Appellants contend that modifying Chen
according to Tseng would unnecessarily complicate device fabrication, since
a single etching process in Chen would be broken up into two separate
etching processes, pointlessly lengthening processing time and potentially
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Application 12/430,591
creating preventable error or complications. App. Br. 12-13. The Examiner
replies that one of ordinary skill in the art at the time of the invention would
have recognized that forming the via as taught by Tseng (in i-f 31) would
have been advantageous for controlling the via size and depth, as well as
producing a via with a larger bottom surface area for connecting to
subsequent structures. Ans. 5 (citing Tseng Fig. 13). The Examiner also
states that the modification of the etching processes does not change the
principle of operation of Chen or render it inoperable for its intended
purpose. Id.
We find the Examiner's interpretation of the reference to be
reasonable. In addition, Appellants do not direct us to evidence or technical
reasoning adequately refuting the Examiner's determination that it was well
within the level of the ordinary skill in the art to combine Chen and Tseng.
Appellants' contentions regarding potential errors or complications (App.
Br. 12-13) is unsupported speculation and therefore unpersuasive.
Turning to ground (2) ("Chen appears to form the conductive
structures 32 in the through hole 34 and in the cavity 31 at the same time,
not by two separate" steps, as taught by Tseng), Appellants contend that
Chen teaches away from being combined with Tseng, because Tseng
performs two separate steps to form two metallization structures. App. Br.
14. The Examiner correctly points out that Chen does not require that
metallization formed in the via must be formed at the same time or in the
same step as metallization formed on the cavity; the reference is silent with
respect to the limitation. Ans. 6. "We will not read into a reference a
teaching away from a process where no such language exists." DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
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Application 12/430,591
2006). Chen does not teach away from Tseng's method because it does not
"criticize, discredit, or otherwise discourage the solution" disclosed in
Tseng. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Appellants'
argument to the contrary is unpersuasive.
Appellants' ground (3) for disputing motivation to modify Chen in
view of Tseng is that the through hole 34 in Chen is not completely filled by
the conducting structures 32, while the entire electrode access hole 104 in
Tseng is completely filled by the top (140-1 and 140-2) and bottom (150-1
and 150-2) electrodes. Reply 5---6. Appellants contend that, as a
consequence, the design and fabrication considerations in Chen are different
from those of Tseng because Chen would not need to form through holes 34
with large openings and modification would not lead to an improvement of
the device in Chen. Id. at 6. Other than suggesting that the design and
fabrication considerations are different, Appellants provide no reason why
one of ordinary skill in the art would not be able to combine the teachings of
the references. "One of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings." Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424
F.3d 1293, 1323 (Fed. Cir. 2005).
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his
or her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
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Application 12/430,591
device. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ"). Furthermore, "if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill." See id. at 41 7.
Once again, Appellants fail to direct us to evidence or technical
reasoning to overcome the Examiner's conclusion it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Chen in view of Tseng. Arguments of counsel cannot take the place
of evidence. In re Greenfield, 571F.2d1185, 1189 (CCPA 1978).
The Examiner states that Higashi teaches a wafer-level method of
fabricating a submount for a microcomponent, wherein the method
comprises a conductive feed-through connection extending from the
backside of the wafer at least partially through a particular sidewall of a
cavity, wherein electrical connection between the electrically conductive
feed-through connection and a metallization on the surface of the cavity is
made at least partially through the particular sidewall of the cavity. Final
Act. 5. According to the Examiner,
[i]t would have been obvious for one of ordinary skill in the art
at the time the invention was made to modify the method of Chen
such that the conductive feed-through connection extends
partially through a particular sidewall of the cavity, and wherein
electrical connection between the electrically conductive feed-
through connection and the metallization on the surface of the
cavity is made at least partially through the particular sidewall of
the cavity, since Chen discloses forming a feed-through
connection through the wafer to connect to a device within the
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Application 12/430,591
cavity, and Higashi discloses a feed-through connection through
a wafer to connect to a device within the cavity is formed by
forming conductive feed-through connection extending partially
through a particular sidewall of the cavity, and an electrical
connection between the electrically conductive feed-through
connection and the metallization on the surface of the cavity is
made at least partially through the particular sidewall of the
cavity.
Id. at 6. Again according to the Examiner, one of ordinary skill in the art at
the time of the invention would have been motivated to modify Chen in the
claimed manner in order to reduce device size and processing steps by
forming the electrically conductive feed-through closer to the micro-
component and eliminating electrode patterning on the wafer surface, as
disclosed by Higashi. Id.
Appellants do not dispute the Examiner's findings and conclusions
regarding modifying Chen in view of Higashi. Appellants have therefore
\'l1aived any argument against such findings and conclusions. Ex parte _llry'e,
94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (citing Hyatt v. Dudas,
551F.3d1307, 1313-14 (Fed. Cir. 2008) for the proposition that the Board
may treat arguments appellant failed to make as waived).
The totality of the evidence supports the Examiner's conclusion of
obviousness.
DECISION
For the above reasons, the Examiner's rejection of claims 12-15, 20,
32, and 33 under 35 U.S.C. § 103(a) as obvious over Chen in view of Tseng
and Higashi is AFFIRMED.
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Application 12/430,591
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
12