Ex Parte Suzuki et al

Board of Patent Appeals and Interferences

Aug 31, 2009

11166383 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKEYUKI SUZUKI, NORIYUKI MATSUOKA,
YOSHINORI WAKABAYASHI, and TOSHITAKA KURODA
____________

Appeal 2009-002175
Application 11/166,383
Technology Center 2800
____________

Decided: September 01, 2009
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 13, 15, 16, 21, and 22. We have jurisdiction under 35
U.S.C. § 6(b).

Appeal 2009-002175
Application 11/166,383

STATEMENT OF THE CASE
Claims 13 and 16 are representative of the subject matter on appeal
and are set forth below:
13. A carrier unit for a semiconductor device comprising:

a contact sheet having a plurality of bumps to be electrically
connected to a terminal group of a semiconductor device, for
inputting/outputting signals relative to the semiconductor device;

a pressing member for pressing terminals of the semiconductor device
onto the bumps of the contact sheet;

an accommodation portion for accommodating the semiconductor
device disposed on said contact sheet; and

a movement-amount controlling member provided as part of said
contact sheet and not electrically connectable to the terminal group, for
controlling a movement amount of said semiconductor device along the
direction of a projected height of said bump when said pressing member
disposed in said accommodation portion is in a pressed state,

wherein said movement-amount controlling member is disposed on
top of said contact sheet and has a flattened top surface.

16. A carrier unit for a semiconductor device comprising:

a contact sheet having a plurality of bumps to be electrically
connected to a terminal group of a semiconductor device, for
inputting/outputting signals relative to said semiconductor device,

a pressing member for pressing terminals of said semiconductor
device onto said bumps of said contact sheet;

an accommodation portion for accommodating said semiconductor
device disposed on said contact sheet; and

2
Appeal 2009-002175
Application 11/166,383

a movement-amount restricting member, provided as part of said
contact sheet and electrically isolated from the terminal group, for restricting
a movement amount of said semiconductor device along the direction of a
projected height of said bump when said pressing member disposed in said
accommodation portion is in a pressed state,

wherein said movement-amount restricting member is disposed on top
of said contact sheet and has a flattened top surface

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matsuoka 5,789,804 (JP 08-288037) Aug. 04, 1998
Ikeya 6,033,235 Mar. 07, 2000
Fujimoto 6,784,681 (JP 2002-303652) Aug. 31, 2004

The Examiner also refers to Japanese document 2001-094244 on page
5 of the Answer.
We note that Appellants provided English translations of Matsuoka
and Fujimoto in their Brief (Evidence Appendix). However, we use the
above-listed English equivalents to these documents (the U.S. patents).

THE REJECTION(S)
1. Claim 15 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Ikeya.
2. Claims 13, 16, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable Matsuoka in view of Fujimoto.
ISSUE
Rejection 1
3
Appeal 2009-002175
Application 11/166,383

Have Appellants shown reversible error in the Examiner’s finding that
Ikeya discloses “a sinking-amount adjustment section” as recited in claim
15?

Rejection 2
Have Appellants shown reversible error in the Examiner’s
determination that a carrier unit having a controlling member with “a
flattened top surface” (claims 13, 16, and 21) would have been obvious?
Have Appellants shown reversible error in the Examiner’s
determination that the applied art suggests a “movement-amount controlling
member” (claim 13) and a “movement amount restricting member” (claims
16, 21, and 22)?
Have Appellants shown reversible error in the Examiner’s
determination that the applied art suggests “a pressing member” (claims 13,
16, 21, and 22)?

PRINCIPLES OF LAW
Claims are interpreted by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage in context as they would be
understood by one of ordinary skill in the art in light of the written
description in the Specification unless another meaning is intended by
Appellants as established therein, and without reading into the claim any
disclosed limitation or particular embodiment. See, e.g., In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited
therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
4
Appeal 2009-002175
Application 11/166,383

One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
In re Keller, 642 F.2d 413, 425-426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097-1098 (Fed. Cir. 1986). The test for obviousness is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Keller, 642 F.2d at 425.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007). The question to
be asked is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id. at 417.

ANALYSIS
Rejection 1
Appellants argue that the Examiner alleges that the combination of
base 11 and springs 38 of Ikeya correspond to Appellants’ claimed “sinking-
amount adjustment section”. Appellants argue that their “sinking-amount
adjustment section” is shown, for example in Figures 8-13 as elements 72d
and 80d, which are convex seats. Br. 14. Appellants explain that their
“sinking-amount adjustment section” is required to "compensate" an amount
of sinking of the bump group. Id. Appellants state that their sinking-amount
adjustment section restricts the contact of the bare chip
(semiconductor device) with the contact sheet due to the sinking of the
contact sheet in the vicinity of the bump group, and/or to avoid deviated
pressure to the bump group in the contact sheet, and refer to their
Specification at page 10, line 25 through page 11, line 18. Appellants assert
5
Appeal 2009-002175
Application 11/166,383

that, as such, the "sinking-amount adjustment section" of claim 15 requires
more than what is offered by the combination of the base (11) and springs
(38) of Ikeya. Appellants state that exemplary sinking-amount adjustment
sections in their Specification include a convex seat 70d (Fig. 9) or a seat
82d (Fig. 11) so that the upward force is not simply uniform, but instead is
"compensating an amount of sinking" of the bump group. Br. 15.
Appellants assert that, as seen in Figures 10 and 11 of Ikeya, there is
no disclosure of a structure that can accomplish either of the above-
described effects. Appellants argue that in Figure 11, instead of a structure
similar to convex seats 70d or 82d "opposite said bump group", Ikeya
suggests concave indentations in the surface of the base (11). Appellants
argue that these would appear to have exactly the opposite effect as the
sinking-amount adjustment required by claim 15 and would allow the
terminal group to sink. Br. 15. Appellants also argue that there is no need to
provide a separate structure to balance the pressing force applied by
compression block 24 of Ikeya. Br. 16.
We are not convinced by Appellants’ arguments of error in the
Examiner’s finding that Ikeya discloses “a sinking-amount adjustment
section” for the following reasons.
Appellants acknowledge that springs 38 of Ikeya provide a uniform
pressure. Br. 15. As such, Appellants have not convincingly explained how
the structure (base 11/springs 38) of Ikeya is not capable of compensating an
amount of sinking in view of the undisputed fact that the structure of Ikeya
provides a uniform pressure. As stated by the Examiner at the bottom of
page 5 of the Answer, Ikeya compensates sinking because the springs 38
provide reactive forces that counterbalance (compensate). The Examiner
6
Appeal 2009-002175
Application 11/166,383

rightly states that convex seats are not the only way to provide a
compensating force. Ans. 5-6. Furthermore, while Appellants desire an
interpretation of the phrase “a sinking-amount adjustment section” to include
convex seats, claim 15 is not so limited. In re ICON Health and Fitness,
Inc., 496 F.3d at 1378-79; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at
1364, and cases cited therein; In re Morris, 127 F.3d at 1054-55. We agree
with the Examiner’s position that the phrase “sinking-amount adjustment
section” is disclosed by the structure in Ikeya.
In view of the above, Appellants have not made clear to us how the
structure of Ikeya is not patentably distinct from Appellants’ claimed
“sinking-amount adjustment section”. We therefore affirm the anticipation
rejection of claim 15.

Rejection 2
With respect to the claimed feature “flattened top surface”, Appellants
argue that the dummy bumps 106 in Figure 1 of Fujimoto are curved, as
admitted by the Examiner. Br. 18.
It is the Examiner’s position that the feature of a flattened surface is
not critical and is predetermined by manufacturing factors. Ans. 5. The
Examiner refers to Japanese document 2001-094244 for showing a dummy
bump having a flattened surface, in support thereof. Ans. 5.
Appellants argue that the Examiner does not provide any basis for his
statement. Br. 19. Yet, Appellants do not dispute that Japanese document
2001-094244 teaches dummy bumps having a flattened surface. As such,
we are unconvinced by Appellants’ argument. The Examiner has provided a
basis for his statement with reference to the Japanese document 2001-
7
Appeal 2009-002175
Application 11/166,383

094244. Therefore, absent evidence of criticality, Appellants have not
convinced us that this aspect of their claimed invention would have been
unobvious, and the Examiner appropriately cited In re Dailey, 357 F.2d 669,
672-673 (CCPA 1966) for this proposition (The court held that the
configuration of the claimed disposable plastic nursing container was a
matter of choice which a person of ordinary skill in the art would have found
obvious absent persuasive evidence that the particular configuration of the
claimed container was significant [emphasis added]). Ans. 6. See also KSR,
550 U.S. at 415-417.
Furthermore, we observe that dummy bump 106 shown in Figure 1 of
Fujimoto has one side that is round and one side that is flat. Appellants’
claims do not indicate which side of the dummy bump (i.e., the movement-
amount restricting or the movement-amount controlling member) is required
to have a flattened surface or whether both sides must have a flattened
surface.
With regard to the claimed phrases “a movement-amount controlling
member” (claim 13) and “a movement amount restricting member” (claims
16, 21, and 22), Appellants argue that Fujimoto does not control the amount
of movement of the semiconductor device as required by their claims. Br.
21-22. As stated by the Examiner on page 7 of the Answer, Fujimoto was
relied upon for teaching a dummy bump on a flexible substrate, and when
incorporated into Matsuoka, the combined teachings of Matsuoka in view of
Fujimoto suggests the subject matter of the claims in this regard. Ans. 7.
One cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d at 425-426; In re Merck, 800 F.2d at 1097-1098. The test for
8
Appeal 2009-002175
Application 11/166,383

obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Keller, 642 F.2d at 425.
Therefore, Appellants’ arguments do not convince us of reversible error.
With respect to “pressing member”, Appellants argue that Matsuoka
does not disclose a pressing member (claims 13, 16, 21, and 22). The
Examiner correctly explains that the Final Office Action mailed July 16,
2007 identified pressing member as the top element in Figure 1 pressing
integrated circuit 14. Office Action mailed July 16, 2007, p. 4. We
understand this top member to be item 13, which is described in column 3,
lines 42-44 of Matsuoka as a retainer that closes IC receptacle 5. This
retainer has a pushing portion 14 for pushing IC 3 against the wiring sheet 1.
Hence, we agree with the Examiner’s finding.
In view of the above, we affirm the obviousness rejection.

CONCLUSIONS OF LAW
Rejection 1
Appellants have not shown reversible error in the Examiner’s
determination that Ikeya discloses “a sinking-amount adjustment section” as
claimed in claim 15.
Rejection 2
Appellants have not shown reversible error in the Examiner’s
determination that “a flattened top surface” (claims 13, 16, and 21) is an
obvious feature.
Appellants have not shown reversible error in the Examiner’s
determination that the applied art suggests a “movement-amount controlling
9
Appeal 2009-002175
Application 11/166,383

member” (claim 13) and a “movement amount restricting member” (claims
16, 21, and 22).
Appellants have not shown reversible error in the Examiner’s
determination that the applied art suggests “a pressing member” (claims 13,
16, 21, and 22).

DECISION
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

ssl

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, D.C. 20001-4413
10