Ex Parte Sumikawa et al

Board of Patent Appeals and Interferences

May 4, 2006

09782180 (B.P.A.I. May. 4, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASATO SUMIKAWA and KAZUMI TANAKA
_____________
Appeal No. 2006-1341
Application No. 09/782,180
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ON BRIEF
_______________
Before KIMLIN, WALTZ and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-18.
Claim 1 is illustrative:
1. A semiconductor device comprising:
a semiconductor substrate having a surface provided
with an external connection electrode and;
a surface opposite that with said external connection
electrode, abrased with a mirror finish and reinforced with
a back-surface reinforcement member.
The examiner relies upon the following references as
evidence of obviousness:
Appeal No. 2006-1341
Application No. 09/782,180
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Tamaki et al. (Tamaki) 6,136,668 Oct. 24, 2000
Sakaguchi et al. (Sakaguchi) 6,150,194 Nov. 21, 2000
Takahashi et al. (Takahashi) 6,153,448 Nov. 28, 2000
Horiuchi et al. (Horiuchi) 6,242,799 Jun. 5, 2001
Ohuchi 6,271,588 Aug. 7, 2001
Toyosawa 6,337,257 Jan. 8, 2002
Appellants’ claimed invention is directed to a semiconductor
device, and method of making it, comprising a substrate having an
external connecting electrode on one surface and having the
opposite surface abrased with a mirror finish. The surface of
the substrate having a mirror finish is provided with a
reinforcement member, such as a coating of resin. According to
appellants “the semiconductor device has a reduced thickness so
that it can bend while a level of rigidity can be assured as the
semiconductor is reinforced with a back surface reinforcing
member of resin” (page 3 of principal brief, first paragraph).
The appealed claims stand rejected under 35 U.S.C. § 103(a)
as follows:
(a) claims 1 and 17 over Toyosawa,
(b) claims 2 and 4 over Toyosawa in view of Ohuchi,
(c) claim 3 over Toyosawa in view of Ohuchi and
Horiuchi,
(d) claims 5-8 and 18 over Tamaki,
(e) claims 9-12 over Tamaki in view of Sakaguchi, and
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(f) claims 13-16 over Tamaki in view of Takahashi.
In accordance with the grouping of claims set forth at pages
5 and 6 of the principal brief, claims 6-12 stand or fall
together, as do claims 13-16.
We have thoroughly reviewed each of appellants’ arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
Section 103 in view of the applied prior art. Accordingly, we
will sustain the examiner’s rejections for essentially those
reasons expressed in the answer, and we add the following
primarily for emphasis.
We consider first the rejection of claims 1 and 17 over
Toyosawa. There is no dispute that Toyosawa discloses a
semiconductor substrate having a back surface 36 that is ground
and polished to a mirror smooth surface (see appellants’
acknowledgment at page 7 of the principal brief, second
paragraph). While appellants maintain that the reference
disclosure does not suggest the physical structure of the claimed
abrased back surface, we find no meaningful distinction between
the mirror surface of the reference and that presently claimed,
and appellants have not explained any such distinction. Also, as
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pointed out by the examiner, claim 1 is an article claim defining
a mirror finish made by a process step, and claim 17 simply
requires a mirror finished surface without regard to how it is
made.
Concerning the claimed reinforcement member on the mirrored
surface, we agree with the examiner that the protective tape on
surface 36 of Toyosawa’s device meets the claimed requirement
(see column 12, lines 27-31). While appellants contend that “the
protective tape is used only in a manufacturing step and does not
form structure of the chip in the context claimed” (page 7 of
principal brief, second paragraph), the rejected claims are
sufficiently broad to encompass devices which receive a further
processing step.
We are also not persuaded by appellants’ argument that the
terms “reinforcement” and “protective” have different meanings in
the semiconductor art. The rejected claims do not define any
degree of reinforcement and we concur with the examiner that the
protective tape of the reference “inherently makes stronger the
semiconductor chip 32 and strengthens it by additional material
or support,” at least to some degree (page 8 of answer, fourth
paragraph).
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Regarding claims 2 and 4, we agree with the examiner that
Ohuchi evidences the obviousness of using a resin material for
the protective tape of Toyosawa. While appellants contend that
the combination of specific resins provide unexpected results,
claim 2 does not specify any type of resin, and a portion of the
specification cited by appellants hardly establishes that the
selection of any of the various resins recited in claim
4 achieves results that would be truly unexpected to one of
ordinary skill in the art. Appellants rely upon no objective
evidence which compares the use of the claimed resins with other
types of resins. Indeed, the cited portion of the specification
provides no objective data.
Concerning claim 3, appellants have not rebutted the
examiner’s legal conclusion that it would have been obvious to
employ the particular resin of Horiuchi, having a Youngs modulus
falling within the claimed range, as the protective tape of
Toyosawa. Appellants’ argument focuses upon the same argument
against the rejection of claims 2 and 4, namely, that the
protective tape of Ohuchi is not a reinforcement tape in the
final article. Again, however, we emphasize that the claims on
appeal do not preclude removal of the reinforcement member during
a latter stage of processing.
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We now turn to the rejection of claims 5-8 and 18 over
Tamaki. As set forth by the examiner, the back surface of
Tamaki’s semiconductor wafer 4a is polished to a mirror finish
and is coated with a reinforcing resist material 33. For some
reason appellants’ arguments in the principal and reply briefs
focus upon adhesive 31 for reinforcing plate 21, but appellants
fail to explain why resin layer 33 of Tamaki, cited by the
examiner, fails to meet the claim 5 recitation of “applying resin
on said surface abrased.”
Appellants also maintain that “claim 5 distinguishes over
the reference [Tamaki] because claim 5 abrases to a mirror
finish” (page 10 of principal brief, penultimate paragraph).
However, appellants have not refuted the examiner’s reasonable
position that the step of “grinding to a mirror finish is
equivalent to abrasing” (page 11 of answer, first sentence).
Also, we agree with the examiner that one of ordinary skill in
the art would have understood that the functional device 3 of
Tamaki can be the claimed external connection electrode. In
addition, appellants have not rebutted the examiner’s finding
that “metal layer 5 is an electrical connection for the
semiconductor package” (page 11 of answer, third paragraph).
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Concerning the separately rejected claims 9-12 and 13-16
over Tamaki in view of Sakaguchi and Takahashi, respectively, we
have no doubt that one of ordinary skill in the art would have
found it obvious to apply the resin by the well-known techniques
of printing or spin-coating. While appellants make reference to
the specification for disclosing that the application of the
resin by printing or spin-coating allows highly viscous resins to
be applied in desired amounts and thicknesses, appellants have
not established that such disclosure would be considered truly
unexpected by one of ordinary skill in the art. In re Merck &
Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986); In
re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). In
order to demonstrate unexpected results it is appellants’ burden
to establish that objective data supporting unexpected results is
commensurate in scope with the degree of protection sought by the
appealed claims and represents a fair comparison with the closest
prior art. Appellants have referenced no such data in the
principal and reply briefs on appeal.
In conclusion, based on the foregoing, and the reasons
well-stated by the examiner, the examiner’s decision rejecting
the appealed claims is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:hh
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