Ex Parte Togawa et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612539122 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/539, 122 08/11/2009 23494 7590 06/02/2016 TEXAS INSTRUMENTS IN CORPORA TED P 0 BOX 655474, MIS 3999 DALLAS, TX 75265 FIRST NAMED INVENTOR Shinichi Togawa 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. TI-65949 8688 EXAMINER GARBER, CHARLES D ART UNIT PAPER NUMBER 2812 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): uspto@ti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHINICHI TOGA WA and MUTSUMI MASUMOT0 1 Appeal2014-001895 Application 12/539, 122 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 2 Appellants appeal the Examiner's decision to reject claims 1 and 4-- 14. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). 1 Appellants identify the real party of interest as Texas Instruments. Appeal Br. 3. 2 In our opinion below, we refer to the Specification filed August 11, 2009 (Spec.), Final Office Action filed May 11, 2010 (Final), the Appeal Brief filed August 13, 2013 (Appeal Br.), the Examiner's Answer filed September 20, 2013 (Ans.), and the Reply Brief filed November 19, 2013 (Reply Br.). Appeal2014-001895 Application 12/539, 122 For the reasons provided by the Examiner, we AFFIRM. We add the following for emphasis. The claims are directed to a semiconductor device. Claim 1, with the limitations at issue highlighted, is illustrative: 1. A semiconductor device, comprising: a semiconductor substrate having a plurality of circuit elements formed thereon; a plurality of protrusion-shaped metal electrodes, which are formed on the semiconductor substrate and which are electrically coupled to selected elements of the plurality of circuit elements; and at least one electronic member disposed on the semiconductor substrate and including a first and second electrodes, the first electrode being metallurgically bonded to a first protrusion-shaped metal electrode and the second electrode being metallurgically bonded to a second protrusion- shaped metal electrode; wherein the first and second electrodes are coupled to the first and second protrusion-shaped metal electrodes by ultrasonic thermo-compression; wherein the protrusion-shaped electrodes include an electrode, a Cu layer formed on the electrode, and a palladium layer formed on the Cu layer; wherein the first and second electrodes are plated with gold; and wherein the metallurgical bond includes a gold-palladium eutectic. Claims Appendix, Appeal Br. 18 (emphasis added). 2 Appeal2014-001895 Application 12/539, 122 The Examiner rejects claims 1, 4--6, 11, and 12 under 35 U.S.C. § 103(a) as obvious over Kuroda3 in view of Chen,4 and adds various other prior art references to reject the other dependent claims. Appellants do not argue any claim separately from the others. The issue on appeal is: Have Appellants identified a reversible error in the Examiner's finding that Kuroda teaches protrusion-shaped metal electrodes, and metallurgically bonding electrodes to the protrusion-shaped metal elements? Appellants have not identified such an error. The Examiner finds that Kuroda' s bump and pad combinations (22+ 12 and 25+ 15, respectively) are protrusion-shaped metal electrodes, and that electrodes 11 and 14, respectively, are metallurgically bonded to the protrusion-shaped metal electrodes. Final 3. Appellants contend that Kuroda does not disclose, alone or in combination inter alia, protrusion-shaped metal electrodes nor does it teach metallurgically bonding electrodes to the protrusion-shaped metal electrodes. The Examiner cited in Kuroda pads 22 and 25 and bump [ 12, 15] which are clearly on the surface as shown in FIGs. 1, 3C, 3D, and 3E. Appeal Br. 14. Appellants then discuss an embodiment shown in their Figures 3A and 3B made by the process shown in Figures 5A---C, which includes a protrusion-shaped metal electrode (1 IOA with electrode pad 120, and layers 122, 124, 126, and 128) having layer 122 of the protrusion-shaped metal electrode connected through an opening 132 in film 130. Appeal Br. 15. Appellants then state their claims are drawn to protrusion through an opening whereas the Examiner cites bumps on a surface. Id. 3 US 2007/0120270 Al, published May 31, 2007. 4 US 5,569,433, issued Oct. 29, 1996. 3 Appeal2014-001895 Application 12/539, 122 The problem is that, as explained by the Examiner, the claims are not limited to a protrusion through an opening. Ans. 3. The claim does not require an opening in a film, nor even a barrier metal layer. Nor does the Specification define the protrusion-shaped metal electrode in a way that requires either an opening in a film or the shape shown in Figures 3A and 3B. See, e.g., Fig. 4 (protrusion-shaped metal electrode is combination of electrode pad 120 and layers 124, 126, and 128); Figure 12 (protrusion- shaped metal electrode 400 having an electrode 120, Cu layer 124, Ni layer 126, and Pd layer 128 with a metal bump 410 metallurigically bonding the electrode 430 to the protrusion-shaped metal electrode 400). Nor do we agree with Appellants that "adding an opening after 'protrusion' would be redundant to one of ordinary skill in English." Reply Br. 6. Protrusions are not necessarily associated with openings, and openings do not even seem to be required in all the embodiments of Appellants' Specification. CONCLUSION We sustain the Examiner's rejections. DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE 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). 4 Appeal2014-001895 Application 12/539, 122 AFFIRMED 5 Copy with citationCopy as parenthetical citation