Ex Parte Vigna et al

Board of Patent Appeals and Interferences

Feb 21, 2003

09205668 (B.P.A.I. Feb. 21, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BENEDETTO VIGNA and
ENRICO MARIA ALFONSO RAVANELLI
____________
Appeal No. 2001-0684
Application No. 09/205,668
____________
ON BRIEF
____________
Before BARRETT, DIXON, and BLANKENSHIP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-13
and 23-27, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2001-0684
Application No. 09/205,668
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BACKGROUND
Appellants’ invention relates to an integrated electronic device comprising a
mechanical stress protection structure. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1. An integrated electronic device comprising:
a semiconductor material body;
an electronic component housed in said semiconductor material
body and having a periphery;
an electrically insulating region extending on top of said
semiconductor material body and including a central portion positioned
directly above all of the electronic component;
a pad region extending on top of said electrically insulating region;
and
a protection structure of a material different from and extending into
said electrically insulating region, said protection structure contacting and
extending downward from portions of the pad region that are not directly
above said electronic component, said protection structure including a
peripheral portion extending around a predominant part of the central
portion of the electrically insulating region.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Chittipeddi et al. (Chittipeddi) 5,751,065 May 12, 1998
(Filed Oct. 30, 1995)
Wollesen 5,900,668 May 4, 1999
(Filed Nov. 30, 1995)
Appeal No. 2001-0684
Application No. 09/205,668
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Claims 6 and 11 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which appellants regard as the invention. Claims 1-5, 7-10, 12, 13, and 23-27 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Wollesen in view of
Chittipeddi.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 14, mailed Oct. 24, 2000) for the examiner's reasoning in support of
the rejections, and to appellants’ brief (Paper No.13, filed Oct. 4, 2000) and reply brief
(Paper No. 15, filed Dec. 28, 2000) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 U.S.C. § 112, SECOND PARAGRAPH
With respect to claim 6, the examiner maintains that it is unclear how claim 1
shows the peripheral region as being connected to the pad and claim 6 states that the
peripheral region is floating. Appellants argue that the language of claim 6 is clear in
view of the disclosed invention wherein there may be a connection/contact and still be
Appeal No. 2001-0684
Application No. 09/205,668
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electrically floating. (See brief at page 4.) We agree with appellants. The examiner
argues that the limitation would be to a method of use of the pad in a device and would
not carry patentable weight. (See answer at page 5.) While this may be a reasonable
interpretation of the claim, it does not make the two claims inconsistent, in our view.
Therefore, we will not sustain the rejection of claim 6 under 35 U.S.C. § 112.
With respect to claim 11, the examiner maintains that the third contact is
redundant. (See answer at pages 3 and 5.) Appellants argue that nothing in claim 1
requires the limitations as set forth in dependent claim 11. (See brief at page 5.) We
agree with appellants. While claim 1 recites “extending into said electrically insulating
region,” this would not necessarily require “a third contact portion extending through
said insulating region” as recited in claim 11. Therefore, we do not find the limitation
redundant as maintained by the examiner, and we will not sustain the rejection under
35 U.S.C. § 112.
35 U.S.C. § 103
With respect to independent claim 1, appellants argue that the combination of
Wollesen and Chittipeddi does not teach or suggest the limitation of claim 1 concerning
“said protection structure contacting and extending downward from portions of the pad
region that are not directly above said electronic component, said protection structure
including a peripheral portion extending around a predominant part of the central
portion of the electrically insulating region.” (See brief at page 6.) We agree with
Appeal No. 2001-0684
Application No. 09/205,668
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appellants. Appellants argue that the plugs of Wollesen are positioned on two sides of
an air pocket or dielectric layer, but nothing suggests that the two plugs can or should
extend around a predominant part of either. (See brief at page 6.) Appellants further
argue that nothing in Wollesen suggests any other structure that extends around a
central portion of an insulating region. (See brief at page 6.) Appellants argue that
Chittipeddi does not remedy the above deficiency. (See brief at page 6.) We agree
with appellants. Appellants argue that the layer 215 as shown in Figure 5 of Chittipeddi
does not extend around a predominant part of any insulating layer. (See brief at page
6.) We agree with appellants.
The examiner maintains that Wollesen teaches a protection structure that
extends around the right hand region between features 4. (See answer at page 5.) We
do not agree with the examiner’s characterization of Wollesen. From our review of
Wollesen the “plugs” 15 are not shown to be extended, and we have no top view of the
device to determine the dimensions thereof. Therefore, it would require us to speculate
as to the configuration and extent of the extension of the plugs. Rejections based on
35 U.S.C. § 103 must rest on a factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art. The examiner and Board
may not, because of doubt that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177
Appeal No. 2001-0684
Application No. 09/205,668
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(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). We do not find that Wollesen or
Chittipeddi teaches the limitation of extending around a predominant part of the central
portion of the electrically insulating region. The examiner admits that Wollesen does
not teach a region that extends around a predominant part of any region, but relies
upon the teachings of Chittipeddi regarding peripheral element 215 that is substantially
annular. (See answer at page 6.) We disagree with the examiner’s findings.
Appellants again reiterate in the reply at pages 2-4 that neither Wollesen nor Chittipeddi
teaches or suggests the claimed invention having a protection structure with a
peripheral portion that extends around a predominant part of a central portion of an
insulating region. We agree with appellants that neither Wollesen nor Chittipeddi
clearly teaches or suggests this limitation.
The examiner relies upon the teaching of Chittipeddi in Figures 5 and 6. (See
answer at page 6.) The examiner maintains that Figure 5 “can clearly be seen as being
annular” and in Figure 6 element 311 is “almost completely annular.” We disagree with
the examiner’s findings since element 311 in Figure 6 is merely a conductor connecting
the two comb-like portions 309 and 310. Appellants have submitted a definition of
annular with the reply which provide the ordinary definition as shaped like a ring. From
our review of the teachings of Chittipeddi, we find not an annular or ring-shaped portion
in Figure 6 as required by independent claim 23 nor do we find that the stress relief
holes in Figure 5 element 307 form a peripheral portion extending around a
Appeal No. 2001-0684
Application No. 09/205,668
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predominant part of the central portion of the electrically insulating region as recited in
independent claim 1. Appellants argue that the examiner has not set forth a prima
facie case of obviousness. (See brief at page 7.) We agree with appellants that the
examiner has not shown that either Wollesen or Chittopeddi teaches all of the elements
as claimed or the combination would have fairly suggested the invention as claimed.
Therefore, we cannot sustain the rejection of independent claims 1 and 23 and their
respective dependent claims.
CONCLUSION
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To summarize, the decision of the examiner to reject claim 1-13 and 23-27 under
35 U.S.C. § 103 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JD/RWK
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