Ex Parte YOU

Board of Patent Appeals and Interferences

Jul 17, 2002

09324780 (B.P.A.I. Jul. 17, 2002)

1 Appellant’s amendment after final (Paper No. 12) was refused entry by the examiner (see
advisory action, Paper No. 13).
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for publication and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOONG-HA YOU
____________
Appeal No. 2002-0579
Application No. 09/324,780
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-14
and 20-24, which are all of the claims pending in this application.1
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Application No. 09/324,780
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BACKGROUND
The appellant’s invention relates to a semiconductor package. A copy of the
claims under appeal is set forth in the appendix to the appellant’s brief.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Johnson et al. (Johnson) 5,969,947 Oct. 19, 1999
(filed Dec. 17, 1997)
Williams et al. (Williams) 6,043,125 Mar. 28, 2000
(filed Nov. 10, 1997)
Oppermann et al. (Oppermann) 6,093,971 Jul. 25, 2000
(filed May 2, 1997)
The following rejections are before us for review.
(1) Claim 24 stands rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
(2) Claims 1, 2, 4, 7, 8, 10 and 20-23 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Oppermann.
(3) Claims 5, 6, 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oppermann.
(4) Claims 3 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Oppermann in view of Williams.
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Application No. 09/324,780
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(5) Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oppermann in view of Johnson.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 17) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 16 and 18) for the appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The written description rejection
The basis of the examiner’s rejection of claim 24 under the first paragraph of 35
U.S.C. § 112 is that the application as originally filed does not provide written
descriptive support for the limitation “non-conductive filling material” in claim 24, which
was first presented in the amendment filed November 21, 2000 (Paper No. 10). The
examiner is correct, and appellant does not dispute, that the application as originally
filed contains no explicit reference to a “non-conductive” filling material as is now recited
Appeal No. 2002-0579
Application No. 09/324,780
Page 4
in claim 24. However, the test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). For the reasons which follow, we are
satisfied that, despite the lack of literal support in the specification for the claim
language “non-conductive filling material,” the disclosure of the application as originally
filed reasonably conveys to one of ordinary skill in the semiconductor packaging art that
the epoxy resin filling material 31 is non-conductive. Accordingly, we shall not sustain
the rejection.
First, in discussing the instant invention, appellant’s specification discloses on
page 5 “a filling material for sealing the first openings” (emphasis ours). From our
perspective, one skilled in the semiconductor packaging art would understand the term
“sealing” in this context to mean sealing or insulating from electrical conduction and
would thus infer that the disclosed filling material is non-conductive. Moreover, it is
apparent from the disclosure of the fabrication process (see especially page 8, lines 16-
25, and Figures 6C and 6D) that the space A formed by the opening in the polyimide
film 24 is necessary to provide access for a bond tool to the chip attaching portion 26 of
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the Cu pattern 25 to bond the chip pad 22 to the chip attaching portion and not for an
external terminal connection, as in the case of the opening in the film 24 for the external
terminal attaching portion 27. Against this background, one skilled in the
semiconductor packaging art would understand the “filling material such as an epoxy
resin” (specification, page 8) disclosed in appellant’s specification to be an electrically
insulating or non-conductive material.
The prior art rejections
Claims 1-6 and 20
Appellant has not offered any argument as to the patentability of these claims
over the prior art applied by the examiner, choosing instead to argue that the
amendment after final (Paper No. 12), which was refused entry by the examiner and
which proposed to cancel claim 1 and amend claims 2-6 and 20 to depend from claim
24, should be entered (brief, pages 22-23). The refusal of an examiner to enter an
amendment after final rejection of claims is a matter of discretion and is not reviewable
by the Board of Appeals. Rather, such an issue should be addressed by a petition
under 37 CFR § 1.181 to the Commissioner, as set forth in 37 CFR § 1.127. See also
In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967); In re Hengehold,
440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971). In the absence of any
argument as to why claims 1, 2, 4 and 20 are not anticipated by Oppermann, why
claims 5 and 6 are not unpatentable over Oppermann or why claim 3 is not
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Application No. 09/324,780
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unpatentable over Oppermann in view of Williams, we have no choice but to summarily
sustain the examiner’s rejections of these claims.
Claims 7-12 and 21-23
Oppermann (see Figures 17-20) discloses a chip module comprising a chip
carrier 76, conductor path structure 83 including a plurality of conductor paths 82 each
having a chip bonding region 89, rod conductor 87 and circular flat conductor 88, an
orifice 90 in the chip carrier 76 exposing the chip bonding region, a recess 91 in the
chip carrier 76 exposing the circular flat conductor 88 and a chip 75 bonded to the
conductor path structure at chip bonding regions 89 of the conductor paths 82. As
disclosed in column 12, lines 26-34,
[a] particular advantage of the connecting construction
shown in FIGS. 17 to 20 is that both the recess 91 and the
orifice 90 in the chip carrier 76 can be filled with connecting
material 95 in one and the same process step so, on the one
hand, external bonding bumps 96 are created for the
external attachment face arrangement 80 of the chip carrier
76 and, on the other hand, internal connections 97 between
the wafer 73 or the chips 75 formed coherently thereby and
the chip carriers 76 are created.
We, like appellant, understand the “connecting material 95" disclosed by Oppermann to
be a conductive material. However, we do not agree with appellant (brief, page 17) that
the presence of conductive filling material, rather than non-conductive filling material, in
Oppermann’s orifices and recesses constitutes a distinction between the subject matter
of claims 7-12 and 21-23 and Oppermann’s chip module. Simply stated, claims 7-12
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and 21-23 do not require that the “filling material that covers the first regions over the
attached corresponding chip pads” be non-conductive. It is well established that
limitations not appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982). Moreover, limitations are not to be
read into the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989).
Appellant’s sole argument as to why claims 7, 8, 10 and 21-23 are not
anticipated by Oppermann and claims 11 and 12 are not unpatentable over Oppermann
is that Oppermann fails to disclose a filling material which is non-conductive that covers
the first regions. It should be apparent from the above discussion that this argument is
not commensurate with the scope of claims 7, 8, 10-12 and 21-23 and thus does not
persuade us of any error in the examiner’s rejections of claims 7, 8, 10 and 21-23 as
being anticipated by Oppermann and claims 11 and 12 as being unpatentable over
Oppermann. These rejections are thus sustained. With respect to the combination of
Oppermann and Williams, appellant’s only argument (brief, page 18) is that Williams
fails to cure the perceived deficiencies (i.e., failure to disclose non-conductive filling
material that covers the first regions) of Oppermann. In that claim 9 does not require a
non-conductive filling material, as discussed above, this argument is not persuasive of
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the nonobviousness of the subject matter recited in claim 9. Accordingly, the rejection
of claim 9 as being unpatentable over Oppermann in view of Williams is also sustained.
Claim 13
We turn now to the examiner’s rejection of claim 13, which depends from claim 7
and further recites that the filling material is an epoxy, as being unpatentable over
Oppermann in view of Johnson. We understand the examiner’s position to be that it
would have been obvious to one of ordinary skill in the art at the time of appellant’s
invention to use a conductive epoxy material as the “connecting material 95" of
Oppermann, as conductive epoxies were well known in the chip package art at the time
of appellant’s invention for making electrical connections on chip packages as
evidenced by Johnson (column 1, line 45). This position seems eminently reasonable
to us.
Appellant offers two arguments in favor of the patentability of claim 13 over the
combination of Oppermann and Johnson. The first argument, which is that “Johnson
specifically describes an epoxy that is conductive” (brief, page 20), appears to be based
on the premise that claim 13 requires a non-conductive filling material. In that claim 13
contains no such limitation, this argument is not well taken. Appellant’s second
argument is that the use of the conductive epoxy of Johnson as the filling material 37 of
Oppermann (see Figure 1) would render the area between the conductor path and the
contact metallizations conductive and thus “would destroy the functioning of the chip
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module of Oppermann, as information to be transmitted off the chip would not have
separately identifiable paths” (brief, page 20). While this may be true, appellant’s
argument is not directed to the modification which we understand to have been
proposed by the examiner, namely, using conductive epoxy as the “connecting material
95.” Appellant’s expressed concerns with regard to destruction of separately
identifiable paths do not apply to such use of a conductive epoxy material. We perceive
no error in the examiner’s proposed combination of Oppermann and Johnson and, thus,
shall sustain the rejection of claim 13.
Clam 14
Turning finally to the rejection of claim 14, which depends from claim 7 and
further recites that the external terminal is a solder ball, the examiner’s position appears
to be that it would have been obvious to one skilled in the art at the time of appellant’s
invention to use a solder ball in fabricating the external bonding bumps 96 of
Oppermann’s chip module, in light of the teaching by Johnson that solder balls were
well known at the time of appellant’s invention for forming electrical terminals (column 1,
line 44; column 4, lines 7-8). Appellant (brief, pages 21-22) argues that Johnson does
not disclose or suggest using the solder balls as external terminals as recited in claim
14 and, further, that the use of a solder ball in forming the external bonding bumps 96
of Oppermann would not permit filling of both the recess 91 and the orifice 90 in one
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and the same process step (see column 12, lines 26-34) and thus would not have been
obvious. For the following reasons, neither of these arguments persuades us of error
on the examiner’s part. Thus, we shall sustain the examiner’s rejection of claim 14.
As for appellant’s first argument, the various considerations in fabrication of
terminals between chips and chip carriers and between chip packages and printed
circuit boards are not of such a nature as to discourage the use of the same type of
terminal fabrication in both applications. Further, as evidenced by Johnson in column
4, lines 7-8, the use of solder balls or ball grid arrays 220 (see Figure 2B) for external
terminals on chip packages was well known in the art at the time of appellant’s
invention and would, thus, have been an obvious choice for one of ordinary skill in the
art in fabricating the external bonding bumps 96 of Oppermann.
As for appellant’s second argument, we do not share appellant’s view that the
use of a solder ball in fabricating the external bonding bump 96 of Oppermann would
not permit the use of a single process step for filling both the recesses and orifices, as
disclosed by Oppermann. Solder balls could, for example, be placed in the recesses
and orifices and heated in a single reflow process step to bond the solder material to
the conductive paths 82.
CONCLUSION
To summarize, the decision of the examiner is affirmed as to claims 1-14 and 20-
23 and reversed as to claim 24.
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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
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-0579
Application No. 09/324,780
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