Ex Parte Yu et al

Patent Trial and Appeal Board

Oct 17, 2016

13162297 (P.T.A.B. Oct. 17, 2016)

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
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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
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