Ex Parte Yu et alDownload PDFPatent Trial and Appeal BoardOct 17, 201613162297 (P.T.A.B. Oct. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/162,297 06/16/2011 43859 7590 10/19/2016 SLATER MATSIL, LLP 17950 PRESTON ROAD, SUITE 1000 DALLAS, TX 75252 FIRST NAMED INVENTOR Chen-Hua Yu 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. TSMll-0048 7186 EXAMINER PIZARRO CRESPO, MARCOS D ART UNIT PAPER NUMBER 2814 NOTIFICATION DATE DELIVERY MODE 10/19/2016 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): docketing@slatermatsil.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHEN-HUA YU, LAWRENCE CHIANG SHEU, HAO-YI TSAI, and CHIEN-HSIUN LEE 1 Appeal2015-005734 Application 13/162,297 Technology Center 2800 Before ADRIENE LEPIANE HANLON, JEFFREY W. ABRAHAM, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final decision 2 rejecting claims 10-14 and 17-20 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Taiwan Semiconductor Manufacturing Co., Ltd. Appeal Brief 3, Mar. 20, 2014 [hereinafter Appeal Br.]. 2 Office Action, Aug. 13, 2013 [hereinafter Final Action]. Appeal2015-005734 Application 13/162,297 BACKGROUND Appellants' invention relates to an integrated circuit, of which claim 10 is representative: 10. An integrated circuit structure comprising: a substrate; a metal pad over the substrate; a passivation layer comprising a portion over the metal pad; a first polymer layer over the passivation layer; a post-passivation interconnect (PPI) line connected to the metal pad, wherein the PPI line comprises at least a via portion over the metal pad and extending into the first polymer layer to contact the metal pad, and wherein the portion of the passivation layer over the metal pad is spaced apart from the via portion by the first polymer layer; a PPI pad connected to the PPI line, wherein the PPI pad is vertically misaligned to the metal pad; a second polymer layer over the PPI line and the PPI pad, wherein the second polymer layer has a thickness greater than about 30 µm; an under-bump metallurgy (UBM) extending into an opening in the second polymer layer and contacting the PPI pad, wherein the second polymer layer has a top surface comprising a first portion directly under a portion of the UBM, and a second portion in contact with the first portion and not directly under the UBM; and a solder ball on the UBM. Appeal Br. 14 (emphasis added). Independent claim 18 similarly comprises a second polymer layer that "has a thickness greater than about 30 µm." See id. at 15-16. The Examiner rejects claims 10-14 and 17-20 under 35 U.S.C. § 103(a) as being unpatentable over Joan K. Vrtis et al., U.S. Patent 2 Appeal2015-005734 Application 13/162,297 Application Pub. No. US 2009/0014869 Al (published Jan. 15, 2009) [hereinafter Vrtis]. Answer3 2-6; Final Action 4--10. 4 Appellants argue the claims as a group. See Appeal Br. 9-12. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 10, and all other claims stand or fall with claim 10. DISCUSSION The Examiner finds that Vrtis discloses all the limitations of claim 10, including a "second polymer layer" which the Examiner identifies as passivation layer 112 ofVrtis Figure 1, see Answer 2-3, except that Vrtis "fails to specify thickness greater than about 30 µm," id. at 3. However, the Examiner finds that Vrtis teaches that layer 112 has a thickness greater than 2 µm, or greater than 4 µm. See id. (citing Vrtis i-fi-125, 50). According to the Examiner, "thickness differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such thicknesses are critical." Id. (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)); see also id. at 4 (citing In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). Finding that Appellants have not established the criticality of a thickness of "greater than about 30 µm," the Examiner determines that "it would have been obvious to one of the ordinary skill in the art to use these values in the device of Vrtis." Id. at 4. 3 Examiner's Answer, Mar. 20, 2014 [hereinafter Answer]. 4 The Examiner originally rejected claims 1-6, 8, 10-14, and 17-20. See Final Action 2-10. However, claims 1-6, and 8 have been canceled. See Appeal Br. 3. Claims 15 and 16 are pending but have been withdrawn from consideration. See id. at 8. 3 Appeal2015-005734 Application 13/162,297 Appellants do not contest in the Appeal Brief that the Examiner has established a prima facie case of obviousness. 5 "A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Woodruff, 919 F.2d at 1578; In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)). Because the range disclosed in Vrtis overlaps the range in claim 10, and the Examiner has established how Vrtis discloses all the other limitations of claim 10, a preponderance of the evidence on this record persuades us that the Examiner has established a prima facie case of obviousness. Appellants argue that paragraph 23 of the Specification establishes evidence of criticality. See Appeal Br. 9--12. Paragraph 23 reads as follows: By increasing the thickness of polymer layer 42, unex- pected results were observed. Simulation results revealed that the dies having a size of 7 mm x 7 mm may pass substantially all thermal cycle tests including 500-thermal-cycles if the respective polymer layer 42 has a thickness greater than 30 µm. Conversely, substantially all dies having sizes of 7 mm x 7 mm failed in the thermal cycle tests including 500-thermal-cycles if the respective polymer layer 42 has a thickness less than 30 µm. 5 In the Reply Brief, May 8, 2015 [hereinafter Reply Br.], Appellants argued for the first time on appeal that the Examiner has not established a prima facie case of obviousness, because the Examiner has not shown that the thickness of the second polymer layer was recognized as a result effective variable. See Reply Br. 4--6 (citing MPEP § 2144.05.II.B; In re Antonie, 559 F.2d 618(CCPA1977)). This new argument is not responsive to the Examiner's Answer, and Appellants have not shown good cause for us to consider it. Therefore, we do not consider this argument for purposes of this appeal. See 37 C.F.R. § 41.41(b)(2). 4 Appeal2015-005734 Application 13/162,297 Spec. i-f 23. According to Appellants, this data compares "the reliability data of the dies with polymer layer 42 having thickness greater than about 30 µm with the reliability data of the dies with polymer layer 42 having thickness smaller than 30 µm." Appeal Br. 10. Thus, Appellants argue that the limitation in claims 10 and 18 on the thickness of the second polymer layer would not have been obvious in view of Vrtis. See id. Appellants also argue that because the claims do not recite a limitation requiring the use of a die sized 7 mm x 7 mm, evidence of results at different die sizes is not required in order to establish criticality. See Appeal Br. 10- 11. According to Appellants, had the reference to 7 mm x 7 mm die size in paragraph 23 not existed or been deleted from the Specification by amendment, die size would not have been a relevant factor in determining whether paragraph 23 provides evidence of a critical range. See id. at 11-12. Appellants argue that the reference to die size was unnecessary "additional information," and that Appellants should not be penalized for providing more information in the Specification than necessary. See id. at 11. Appellants' arguments do not persuade us that the range of "greater than about 30 µm" is critical. As the Examiner correctly notes, the Specification identifies die size as "a variable of importance in determining whether the thickness of the second polymer layer is relevant or not." Answer 7 (citing Spec. i-f 4). The Specification teaches that in the prior art, the die size of wafer level chip scale packaging (WLCSP) is limited "to 5 mm x 5 mm and below," because the prior art configuration "can induce solder joint crack during the thermal cycling or drop test." Spec. i-f 4. However, Appellants' evidence of criticality relates only to thermal cycling reliability of dies that are 7 mm x 7 mm. Spec. i-f 23. Because claim 10 includes die sizes larger and smaller than 7 mm x 7 mm, Appellants have not 5 Appeal2015-005734 Application 13/162,297 shown evidence of criticality that is commensurate with the scope of claim 10. See In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (holding that the applicant must show unexpected results covering the scope of the claimed range, or narrow the claims). In addition, we agree with the Examiner that the evidence Appellants rely on to show criticality "lacks scientific, statistical, and practical significance to establish the criticality of having the second polymer with a thickness greater than 30 µm." Answer 8. The Specification refers to "[ s ]imulation results" in which the polymer layer "has a thickness greater than 30 µm," and other results where the layer "has a thickness less than 30 µm," but does not specify what the thicknesses actually were, and does not provide actual data. See Spec. i-f 23. We also note that paragraph 23 does not include details of the simulation, or any persuasive evidence or technical reasoning that the simulation results reflect thermal cycle reliability in real- world conditions. Thus, Appellants have failed to point to persuasive evidence establishing criticality of the range "greater than about 30 µm" in claim 10. For the above reasons, a preponderance of the evidence on this record does not persuade us of reversible error in the Examiner's decision to reject claim 10. For the same reasons, we find no reversible error in the Exam- iner's decision to reject claims 11-14 and 17-20. 6 Appeal2015-005734 Application 13/162,297 DECISION The Examiner's decision is affirmed. 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 )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation