Ex Parte Siegel et al

Board of Patent Appeals and Interferences

Jul 14, 2010

10835419 (B.P.A.I. Jul. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HARRY M. SIEGEL and ANTHONY M. CHIU
____________________

Appeal 2009-012529
Application 10/835,419
Technology Center 2800

____________________

Before: MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-012529
Application 10/835,419

INTRODUCTION
Appellants’ Request for Rehearing, filed September 27, 2010,
including a Certificate of Mailing in compliance with 37 CFR § 1.8
indicating a First Class Mail deposit date of September 16, 2010, contends
that we erred in our Decision on Appeal entered July 16, 2010. In the
Decision we affirmed the prior art rejection of claims 15, 17, 19-24, 26-31,
33, 34, and 36.
OPINION
Appellants argue that the Board misapprehended the meaning of
Gang’s teaching that “[a] heat conductive or electrically conductive die-
bonding epoxy is preferably used for attachment of the semiconductor chip”
(col. 9, ll. 36-38). According to Appellants, the Board’s negative inferences
that a heat conductive die-bonding epoxy is inherently electrically
nonconductive and that an electrically conductive die-bonding epoxy is
inherently heat nonconductive are improper given the teachings of Gang as a
whole (Req. for Reh’g 2).
While we agree with Appellants (Req. for Reh’g 3) that the disclosure
concerning the embodiment of Figure 10 does not explicitly state that a heat
conductive die-bonding epoxy is electrically nonconductive nor that an
electrically conductive die-bonding epoxy is thermally nonconductive,
Appellants’ further argument that the Board has insufficient evidence in
Gang to support its negative inferences (Req. for Reh’g 3-4) is not
persuasive. The plain meaning of the sentence relied upon by the Board in
the Decision admits of no alternative interpretation. Gang states that its die-
bonding epoxy is “heat conductive or electrically conductive” (referring to
2
Appeal 2009-012529
Application 10/835,419

Gang col. 6, ll. 25-31) (emphasis added). The word “or” indicates an
alternative. Gang is disclosing that its epoxy is either heat conductive or
electrically conductive; the statement does not allow for both properties to
be true at the same time. Further, because an object is either thermally
conductive or thermally nonconductive, and because an object is either
electrically conductive or electrically nonconductive, Gang’s disclosure
therefore also means that its heat conductive epoxy is electrically
nonconductive, and that an electrically conductive epoxy is thermally
nonconductive. The fact that Gang teaches that in an alternative embodiment
the die-bonding epoxy used is both electrically and thermally conductive
(col. 6, ll. 48-52; Req. for Reh’g 3) does nothing to alter our interpretation of
the portion of Gang’s disclosure cited in the Decision.
Appellants’ remarks concerning the other references of record (Req.
for Reh’g 4-6) are not considered germane to the Request for Rehearing,
because the Board relied on Gang to teach the aspect of the claimed
invention at issue in the Request.
Therefore, Appellants have not shown any points which we
misapprehended or overlooked in our Decision.

CONCLUSION
In summary, we have granted Appellants’ request for rehearing to the
extent that we have reconsidered our decision rejecting claims 15, 17, 19-24,
26-31, 33, 34, and 36, but we decline to modify the decision in any way.

3
Appeal 2009-012529
Application 10/835,419

REHEARING DENIED

ELD

STMICROELECTRONICS, INC.
MAIL STATION 2346
1310 ELECTRONICS DRIVE
CARROLLTON, TX 75006
4