Ex Parte THEN et al

Patent Trials and Appeals Board

May 8, 2019

15278203 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/278,203 09/28/2016 Nam Khong THEN
132194 7590 05/10/2019
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
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.
ONS02183US 2748
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
05/10/2019 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):
patents@onsemi.com
ipdocket@iptech.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAM KHONG THEN, HUI MIN LER,
PHILLIP CELAYA, and CHEE HI ONG CHEW
Appeal2018-006067
Application 15/278,203
Technology Center 1700
Before LINDA M. GAUDETTE, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-006067
Application 15/278,203
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejections2 of
claims 1---6 and 8-15. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method for plating electrical terminals of
a semiconductor package. Spec. 1 :4---6. 3 Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for plating package leads, comprising:
providing a package having a lead electrically coupled to
one or more tie bars;
singulating said lead;
electroplating said singulated lead by passing a current
from a lead frame to the singulated lead solely via the one or
more tie bars; and
singulating said one or more tie bars.
Claims Appendix (Br. 13).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Celaya US 2010/0187663 Al Jul. 29, 2010
1 Appellant is the Applicant, "Semiconductor Components Industries, LLC,"
which, according to the Appeal Brief, is the real party in interest. Appeal
Brief of November 28, 2017 ("Br."), 3.
2 Final Office Action of May 23, 2017 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of March 22, 2018 ("Ans.") and the
Reply Brief of May 21, 2018 ("Reply Br.").
3 Application No. 15/278,203 ("Spec.").
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Appeal2018-006067
Application 15/278,203
Leung US 2016/0035651 Al Feb. 4, 2016
REJECTIONS
The Examiner rejects claims 1---6 and 8-15 "under 35 U.S.C. 112(a) or
35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement." Final Act. 3.
The Examiner rejects claims 1, 2, 5, 8-13, and 15 under 35 U.S.C.
I02(a)(2) as being anticipated by Leung. Final Act. 4
The Examiner rejects claims 3, 4, 6, and 14 under 35 U.S.C. 103 as
being unpatentable over Leung in further view of Celaya. Final Act. 7.
OPINION
Written Description Rejection
Appellant argues that the Examiner reversibly erred in rejecting
claim 1 for failure to comply with the written description requirement. 4
Appellant cites to various passages of the Specification arguing that the
claim limitation "passing a current from a lead frame to the singulated lead
solely via the one or more tie bars" is sufficiently supported. Br. 8-10. The
Examiner, on the other hand, finds that the Specification does not preclude
the current from being applied to components other than the tie bar, such as
wire bond 204. Final Act. 3. In other words, the Examiner finds that
although the specification discloses that "the current is applied to the tie
bars," it fails to disclose that the current is not applied to components such as
wire bond 204. Ans. 9.
4 Because Appellant does not argue the written description rejection of
claims 2-6 and 5-18 separately, these claims stand or fall with claim 1 for
the written description rejection. Br. 10; see also 37 C.F.R. § 4I.37(c)(l)(iv).
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Appeal2018-006067
Application 15/278,203
Compliance with the written description requirement is determined by
whether the disclosure shows possession to a person of ordinary skill in the
art. Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 997
(Fed. Cir. 2000). "Put another way, one skilled in the art, reading the
original disclosure, must immediately discern the limitation at issue in the
claims." Purdue Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323 (Fed.
Cir. 2000).
In this case, Appellant argues that, given the disclosure of applying
the current to the tie bars, a skilled artisan "would recognize that [the] ties
bars are the sole structure utilized in electroplating." Br. 9. Notwithstanding
the fact that the argument is not supported by evidence, it differs from the
claim language in scope5 and is therefore unpersuasive. Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is no
substitute for evidence."). Appellant's argument that there is no "teaching"
in the specification "that current is applied to any structure other than [the]
tie bars to electroplate [the] electrical terminals" (Br. 9) is likewise
unpersuasive for it differs from the claim language and it does not address
the Examiner's finding that the Specification lacks affirmative disclosure of
the recited negative limitation.
Appellant acknowledges that wire bond 204 "electrically couples
electrical terminal 108 to die 206 via bond pad 202." Br. 9 (citing
Spec. 6: 14--16). We note that the sentence quoted by Appellant, in its
entirety, further provides "a clip bond 200 electrically coupling the electrical
5 Rather than using tie bars alone to electroplate a terminal as Appellants
argue, the claim limitation at issue is "passing a current from a lead frame to
the singulated lead solely via the one or more tie bars."
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Appeal2018-006067
Application 15/278,203
terminals 102, 104, and 106 to the die 206." Spec. 6:16-17. The
Specification also provides that "the electrical terminals 118 and 120
electrically couple to the tie bar 114 via the die 206, clip 200, and electrical
terminal 114." Id. at 6: 11-12. Citing Figure 3 of the Specification, the
Examiner also undisputedly finds that the tie bar is connected to bond
pad 202 "which is electrically connected to tie bar 204, which is electrically
connected to terminal 108 thus capable of having electrical current to pass
there through." Compare Ans. 10, with Reply Br. 1-2. As a result, we are
unpersuaded that reversible error has been identified in the written
description rejection.
Anticipation Rejection
Appellant argues that the Examiner reversibly erred in rejecting claim
1 because Leung does not disclose "passing a current from a lead frame to
the singulated lead solely via the one or more tie bars." Br. 11. Appellant
argues that Leung's disclosure that "[t]hrough the use of the additional wire
bonds 42 the electrical continuity necessary for electroplating the I/0
terminals 21, 23, 25, of each lead frame 22, 28 in a row in a single step is
achieved" shows that "electroplating is performed via wire bonds." Id.
(citing Leung ,r 39).
The Examiner, on the other hand, finds that the "wire bonds are only
used for electroplating subsequent die attach regions and thus not used for
the leads[.]" Ans. 12 (citing Leung ,r 39). We note, however, the claim
language is not limited to a particular stage of electroplating. The Examiner
also finds that Leung's "tie bars 29 also provide electrical connection to the
lead frame structure 20" which discloses the limitation at issue. Id. The
Examiner alternatively finds that because "each terminal is directly
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Application 15/278,203
connected to a tie bar," "the current solely goes to the leads via the tie bar
and not through any other structure." Id.
Given Leung's disclosure that "[t]hrough the use of the additional
wire bonds 42 the electrical continuity necessary for electroplating the I/0
terminals 21, 23, 25 of each lead frame 22, 2 8 in a row in a single step is
achieved" (Leung ,r 40) and the lack of a sufficient explanation as to why a
direct electrical connection between a terminal and a tie bar discloses the
limitation at issue, we are persuaded that the Examiner reversibly erred in
rejecting claim 1 based on Leung. We reverse the anticipation rejection of
claim 1, 2, 5, 8-13, and 15 as well as the obviousness rejection of claims 3,
4, 6, and 14.
DECISION
The Examiner's rejection of claims 1-6 and 8-15 "under 35 U.S.C.
112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement" (Final Act. 3) is affirmed.
The Examiner's rejection of claims 1, 2, 5, 8-13, and 15 under
35 U.S.C. 102(a)(2) as being anticipated by Leung is reversed.
The Examiner's rejection of claims 3, 4, 6, and 14 under 35 U.S.C.
103 as being unpatentable over Leung in further view of Celaya is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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