Ex parte Wong

Board of Patent Appeals and Interferences

Jul 25, 2000

08350865 (B.P.A.I. Jul. 25, 2000)

See paper no. 23, mailed Oct. 27, 1998.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD J. WONG
____________
Appeal No. 1998-0338
Application No. 08/350,865
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 10 and 12 through 23. Claim 11 is indicated
as being allowable. As the result of an amendment after final
rejection, a rejection under 35 U.S.C. § 112, second paragraph
has been dropped , resulting in the allowability of claims 91
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Application No. 08/350,865
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and 23 since there is no prior art rejection for these claims.

The invention relates to a bond pad such as that used in
a semiconductor integrated circuit. Stress on parts of a bond
pad makes them susceptible to cracking (see Figure 2 and crack
16). Looking at Figure 3, an elongated strip-shaped volume of
oxide (36) in contact with the foundation layer (22)
underlying the bond pad, along with strip-shaped openings
(note width B of the opening) in the metal plate (24)
overlying the foundation layer (22), relieves this stress.
Representative independent claim 1 is reproduced as
follows:
1. A bond pad structure, comprising:
a first metal plate, an opening existing in said
first metal plate;
a second metal plate disposed over said first metal
plate and extending over said opening;
a layer of oxide disposed between said first metal
plate and said second metal plate, a plurality of vias
formed in said layer of oxide between said first metal
plate and said second metal plate; and
a plurality of conductive plugs, each of said
conductive plugs being disposed in a respective one of
said vias, each of said conductive plugs being
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Application No. 08/350,865
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electrically coupled to said first metal plate and said
second metal plate.
The references relied on by the Examiner are as follows:
Nishimoto 5,289,036 Feb. 22, 1994
Brugge 5,412,250 May 2, 1995 (filed Sep.
24, 1993)
Appellant’s Admitted Prior Art, Figure 2 (APA)
Claims 12 through 14 and 16 through 18 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by APA.
Claims 1 through 4, 6 through 8, 10, 19 and 22 stand
rejected under 35 U.S.C. § 103 as being unpatentable over APA
in view of Nishimoto.
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over APA and Nishimoto and further in view of
Brugge.
Claim 15 stands rejected under 35 U.S.C. § 103 as being
unpatentable over APA in view of Nishimoto.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over APA in view of Nishimoto.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief, reply brief, answer
and supplemental answer for the details thereof.
Appeal No. 1998-0338
Application No. 08/350,865
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OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 12, 13, 17 and 18 are
properly rejected under 35 U.S.C. § 102. Thus, we will
sustain
the rejection of these claims but we will reverse the
rejection of remaining claims on appeal for the reasons set
forth infra.
At the outset, we note that Appellant has indicated all
claims stand but do not fall together (brief-page 6). The
Examiner indicates that no reasons had been set forth as
required under 37 CFR § 1.192(c)(7) and (c)(8) (answer-page
3). In response, Appellant indicated that the reasons can be
set forth in the argument section, and Appellant had done this
(reply brief-page 2). Our review of the brief does not bear
this out. We find Appellant has argued claims 12 through 14
and 16 through 18 together (brief-pages 6-9), claims 1 through
8, 10, 15 and 19 through 22 together (brief-pages 9-11), claim
6 separately (brief-page 11), and claim 14 inferentially
separately (reply brief-page 4). Thus, we will treat claims
Appeal No. 1998-0338
Application No. 08/350,865
Claim 14 is being treated as argued separately, and2
claims 15 and 16 depend from 14.
5
12 through 13 and 16 through 18 as standing or falling
together with claim 12 as the representative claim; claims 1
through 8, 10 and 19 through 22 as standing or falling
together with claim 1 as the representative claim; claim 6
separately; and claims 14 through 16 as standing or falling2
together with claim 14 as the representative claim.
With respect to claim 12, the Examiner indicates that APA
(Figure 2) teaches the claimed invention with mesh oxide 15
being the “means for transferring stress” (answer-page 5).
Appellant argues that the claimed “means for transferring
stress” must be limited to that described in the specification
and equivalents thereof, citing 35 U.S.C. § 112, paragraph 6
and case law (brief-page 6 and 7). Appellant complains that
the Examiner never stated a proper 35 U.S.C. § 112, paragraph
6, analysis (brief-page 8). Furthermore, Appellant argues,
“That the mesh oxide of the embodiment of Figure 3 and the
mesh oxide of the prior art Figure 2 both transfer stress,
does not make them ‘the same’”. (Brief-pages 7 and 8.)
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The Examiner responds, “. . . the mesh oxide layers are
one and the same. Therefore, the Appellant’s disclosed prior
art discloses a ‘means for transferring stress’ in the same
exact manner as the claimed invention as describe[d] in claim
12.” (Answer-page 9.)
We agree with the Examiner. There is nothing in claim 12
that requires the oxide to be different than that in APA.
Appellant’s argument that they are not “the same” just because
they both “transfer stress” misses the point. All that is
claimed is a “means for transferring stress” (emphasis added),
not a difference in mesh oxides.
Appellant would have us read claim 12 as including
openings in the lower metal plate (i.e., the first metal
plate, directly over the foundation layer), and that such
openings are not shown in APA. This is reasoned by the fact
that claim 14, dependent from claim 12, defines the “means for
transferring stress” as being in contact with the foundation
layer. This would require an opening in the lower metal
plate, not shown in APA (reply brief-page 4).
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Appellant is not permitted to engage "in a post hoc
attempt to redefine the claimed invention by impermissibly
incorporating language appearing in the specification into the
claims." In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671,
1674 (Fed. Cir. 1994). Claim 14 refines the “stress
transferring” means to be
“a volume of oxide, . . . contacting a planar upper surface of
said foundation layer.” To read the limitations of claim 14
into claim 12 would make claim 14 redundant with claim 12.
The claim 12 language is broader than claim 14 and only
requires the “stress transferring” means to be “directly under
said [upper] conductive plate, . . . [and] disposed between
said conductive plugs.” This is clearly shown in APA, and
requires no holes in the lower conductive plate. Appellant’s
specification supports this analysis wherein it states “In
some embodiments, there are no openings in the first [lower]
plate but rather a relatively wide elongated volume of oxide
between the first plate and the second plate transfers stress
without cracking and prevents the oxide mesh from cracking.”
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(Emphasis added.) (Specification page 8, line 35 to page 9,
line 4.)
In view of the foregoing, we will sustain the Examiner’s
rejection of claim 12, and likewise claims 13, 17 and 18 which
stand or fall therewith.
As pointed out by Appellant, claim 14 requires the “means
for transferring” to be a volume of oxide which contacts the
foundation layer. As also pointed out by Appellant, this
requires an opening in the lower conductive plate, not shown
by APA (reply brief-page 4).
It is axiomatic that anticipation of a claim under
§ 102 can be found only if the prior art reference discloses
every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established only when a single prior art reference
discloses, expressly or under principles of inherency, each
and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
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USPQ 385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228
(1984), citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983). Since APA does not
disclose any openings in the lower plate, the Examiner’s
rejection fails, and we will not sustain the rejection of
claim 14 under 35 U.S.C. § 102. Likewise, we will not sustain
the rejection of claims 15 and 16 which depend from claim 14
and include the same unmet limitation.
With respect to claim 1, the Examiner reasons that it
would have been obvious to use the openings or slits of
Nishimoto in APA “to facilitate the electrical connection or
bond.” (Answer-page 5.) The Examiner states “Nishimoto
discloses that openings or slits could be used to alleviate
stress and avoid cracking a relatively rigid insulative layer
when it is in contact with a conductive layer. Therefore,
Nishimoto provides the proper motivation to support the 35
U.S.C. § 103 rejection.” (Answer-page 13.)
Appellant argues that the Examiner has used Nishimoto to
solve a problem recognized by Appellant, not known in the
prior art. Appellant contends, even if Appellant’s problem
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were known in the prior art, Nishimoto solves a different
problem of cracking in a passivation layer over metal wiring.
Nishimoto’s problem occurs when the width of the metal wiring
is large, and
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adds slits to reduce the effective width. Furthermore,
Appellant contends, Nishimoto has its own bond pads but does
not have slits there.
It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
In addition, the Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). In addition, the
Federal Circuit reasons in Para-Ordnance Mfg. v. SGS Importers
Int’l, Inc., 73 F.3d at 1087-88, 37 USPQ2d at 1239-40, that
for the determination of obviousness, the court must answer
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whether one of ordinary skill in the art who sets out to solve
the problem,
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and who had before him in his workshop the prior art, would
have been reasonably expected to use the solution that is
claimed by the Appellants.
We find that those skilled in the art having the
teachings of APA and Nishimoto before them would not have put
slits in the lower metal plate.
First, Appellant claims to have discovered the problem.
The Examiner has not contested this, nor shown cracking in a
bonding pad to be a known problem in the prior art.
Second, even if bonding pad cracks were known in the
prior art, we see no motivation to apply Nishimoto’s
passivation layer cracking solution to bonding pads.
Nishimoto’s solution is to reduce the effective width of the
underlying wiring bus. We are not convinced that one of
ordinary skill in the art, seeing Nishimoto, would decide to
reduce the effective width of the lower metal plate in the
bonding pad of APA.
Third, Nishimoto’s bonding pad does not have slits, and
this may well be because the pad has no passivation layer to
crack. On the other hand, APA has a passivation layer, but
the cracking problem does not appear in this layer.
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Thus, we are not convinced by the Examiner that it would
have been obvious to have made slits in APA, based on
Nishimoto. Accordingly, we will not sustain the rejection of
claim 1, and likewise claims 2 through 8 and 10 which are
dependent from
claim 1 and contain the same unmet limitation. Similarly, we
will not sustain the Examiner’s rejection of claim 19 which
also requires an opening in the lower conductive plate.
Claims 20 through 22 depend from claim 19, thus we will not
sustain the rejection of these claims.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 8, 10 and 19 through 22 under
35 U.S.C. § 103 is reversed; additionally, the decision of the
Examiner rejecting claims 14 through 16 under 35 U.S.C. § 102
is reversed; however, the decision of the Examiner rejecting
claims 12, 13, 17 and 18 under 35 U.S.C. § 102 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-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
jg
Appeal No. 1998-0338
Application No. 08/350,865
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T. LESTER WALLACE
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FRANKLIN & FRIEL
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