Ex Parte Zhang et al

Patent Trial and Appeal Board

Aug 30, 2018

13754799 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/754,799 01/30/2013 Leilei Zhang
75359 7590 09/04/2018
ZILKA-KOTAB, PC-NVID
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
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.
NVIDP779/SC-12-0353-US 1 2925
EXAMINER
CAZAN, LIVIUS RADU
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEILEI ZHANG, RONILO V. BOJA, ABRAHAM FONG YEE,
and ZUHAIR BOKHAREY
Appeal2017-006868
Application 13/7 54,799
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Leilei Zhang et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-5, 7-10, and 12-14.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM-
IN-PART.
1 The Appeal Brief identifies NVIDIA Corporation as the real party in
interest. Appeal Br. 3.
Appeal2017-006868
Application 13/754,799
SUMMARY OF THE INVENTION
Appellants' claimed invention is directed to "techniques for forming
high density plated through holes in thick substrates." Spec. ,r 1. Claim 1,
the sole independent claim on appeal, is reproduced below from page 15
( Claims Appendix) of the Appeal Brief:
1. A method, comprising:
forming one or more holes in a thick substrate using a
laser drilling technique, wherein each hole in the one or more
holes has a diameter that is less than 100 µm;
re-forming the one or more holes formed via the laser
drilling technique via a mechanical process;
electroplating the one or more holes with a conductive
material, wherein the conductive material does not completely
fill the one or more holes; and
filling the one or more plated holes with a non-
conductive material,
wherein the thick substrate comprises a dielectric layer
having a thickness greater than or equal to 200 µm.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Edwards
Ito
Jiang
us 5,363,553
US 2007 /0227766 Al
CN 101409982 A
REJECTIONS
Nov. 15, 1994
Oct. 4, 2007
Apr. 15, 2009
I. Claims 1, 2, 7, 8, and 12-14 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Ito and Edwards.
II. Claims 3 and 4 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ito, Edwards, and Jiang.
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Application 13/754,799
III. Claims 5, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito, Edwards, and, optionally, Jiang, and further in
combination with Appellants' alleged admission.
ANALYSIS
Rejection I
Appellants present arguments for claims 1, 2, 7, 8, and 12-14
collectively. Appeal Br. 9-11. We select claim 1 as representative. See 37
C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Ito discloses a method of forming holes in a
thick substrate substantially as recited in claim 1, including drilling a hole
having a diameter of 7 5 microns, electroplating the hole with conductive
material, and filling the plated hole with a non-conductive material. Final
Act. 3--4, 5. The Examiner relies on Edwards to teach forming a small pilot
hole in the outer layer using a laser, followed by mechanically drilling the
hole (i.e., re-forming the laser-drilled hole) using a mechanical process. Id.
at 6. The Examiner determines that modifying Ito's process to include these
teachings of Edwards would have been obvious to one of ordinary skill in
the art "in order to avoid skating and wander of the drill bit of Ito." Id.
According to the Examiner, "[l]aser drilling can produce holes of very small
diameter (i.e. even below 50 microns; see para [0035]), and would clearly be
suitable to form a pilot hole smaller in diameter than the through hole
obtained after mechanically drilling using the 75 micrometer drill bit of Ito."
Id.
Appellants traverse, arguing that "Edwards does not teach or suggest
using a laser drilling technique to form 'one or more holes in a thick
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Application 13/754,799
substrate' (emphasis added), where the thick substrate includes 'a dielectric
layer having a thickness greater than or equal to 200 µm,' as required by the
limitations of the claims." Appeal Br. 10; see also Reply Br. 5---6.
Appellants acknowledge that Edwards "disclose[s] that drill bit 'skating and
wander' is a problem during drilling," but assert that "at no point does
Edwards suggest that a solution to this problem when forming holes in a
thick substrate is to drill a hole through both a metallic surface and a
polymeric interior using a laser and then finish the hole using a mechanical
drilling technique." Appeal Br. 10. Similarly, Appellants argue "there is no
suggestion or motivation in Edwards, or any of the other cited references, to
apply the laser etching and drilling technique to any material other than the
thin metal foil." Id. at 11. Appellants also assert that Edwards discloses that
"[a]ll through holes are produced in the metal, trilayer laminate ... prior to
lamination to any dielectric material and forming vias therein using, e.g., a
hole punching technique." Id. at 10.
We are not persuaded by Appellants' arguments. Appellants'
arguments that Edwards fails to teach forming a hole in a "thick" substrate
are unpersuasive because the Examiner relies on Ito, not Edwards, to teach
forming a hole in a thick substrate, and Appellants have not explained
persuasively why Edwards' s laser drilling technique would not be usable on
a "thick" substrate. Appellants' piecemeal attack on Edwards individually is
unpersuasive of error because the rejection is over the combined teachings of
the references. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.").
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Application 13/754,799
Appellants' argument that Edwards only teaches laser-forming a hole
in thin metal foil but does not suggest drilling a hole through a metallic
surface and a polymeric surface are unpersuasive because claim 1 does not
require forming a hole to a specific depth or completely through the recited
substrate; rather, claim 1 requires only "forming one or more holes." Thus,
Appellants' arguments are not commensurate with the scope of the claim,
and, therefore, are unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
Appellants' argument that Edwards forms vias only by a hole
punching technique is unpersuasive because such punching relates to an
embodiment not relied upon by the Examiner. See Edwards 8: 18-23
("According to a still further embodiment of the invention .... " ( emphasis
added)). Moreover, claim 1 does not require forming vias.
Appellants further argue that the Examiner's reliance on Edwards' s
disclosure of pilot holes is improper because "[t]he brief discussion of the
laser etching/ablation technique for forming pilot holes is not sufficiently
tied to the structural description of circuitized flexible strips or the
composite structure disclosed in the reference." Reply Br. 5.
We are not persuaded by this argument. Edwards recognizes that
"[ s ]kating and drill bit wander are pervasive problems in mechanical drilling
of through holes" and that "[i]t is well known that the mechanical location of
a drilled hole can be significantly improved by the provision of a small pilot
hole." Edwards 8:26-32. Edwards further discloses that "through holes are
drilled in the multi-layer substrate by laser drilling a shallow pilot hole in the
dielectric ... and thereafter mechanically drilling the through hole." Id. at
5: 18-21. Edwards' s use of "pilot hole" in the Specification is consistent
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Application 13/754,799
with the ordinary usage of the term. We note that one dictionary definition
of "pilot hole" is "[a] small hole drilled in order to facilitate the accurate
drilling of a larger hole or the insertion of a screw" (http://www.oed.com/
view/Entry/264236 (last visited August 27, 2018)). Thus, the Examiner's
rejection is based on a rational underpinning and supported by the evidence.
Nor do we agree that Edwards and Ito have "completely different
structure[s] and material[s]" such that application of Edwards's pilot hole
process to Ito's laminate board would not have predictable results. Reply
Br. 6. Edwards explains that the problems of skating and drill bit wander are
"especially true in cards and boards having a metallic ... surface and an
organic polymeric interior." Edwards 8:28-30. Ito discloses a similar
structure: "copper plated laminate boards." Ito ,r 194. We, therefore,
determine that using Edwards's pilot hole process on Ito's similarly
structured laminate board would yield the predictable result of facilitating
subsequent mechanical drilling of the hole, as set forth by Edwards.
Accordingly, we sustain the rejection of claims 1, 2, 7, 8, and 12-14
as being unpatentable over Ito and Edwards.
Re} ection II
With respect to the rejection of claims 3 and 4, Appellants rely on the
arguments advanced with respect to the rejection of claim 1, from which
claims 3 and 4 depend. Appeal Br. 11-12. Therefore, we likewise sustain
the rejection of dependent claims 3 and 4.
Re} ection III
Regarding claims 5, 9, and 10, the Examiner determines that
Appellants admitted that "inventions IA and IC are not patentably distinct
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from inventions IB and ID." Final Act. 8. The Examiner equates "invention
IA" with claim 5, "invention IB" with claims 7 and 8, "invention IC" with
claims 9 and 10, and "invention ID" with claim 12. Id. at 7-8. The basis for
the Examiner's finding is Appellants' statement, in the Petition traversing
the Examiner's Restriction (filed Sept. 8, 2015, hereinafter "Pet.") that "the
'inventions' associated with the different subgroups I.A through I.Dare
related and not patentably distinct as the different steps described in the
claims of each subgroup are all related to a single process for forming
microvias (i.e., a single invention)." Pet. 3--4; see also Ans. 17. The
Examiner interprets this explanation as a "statement that claims 5, 9 and 10
are ... unpatentable, because they are not patentably distinct from the claims
rejected based on prior art." Ans. 17.
We do not agree with the Examiner's interpretation of the quoted
statement in the Petition. Appellants' statement that claims 5-12 are all
directed to the same invention (i.e., a method of forming holes ( or
"microvias") in a substrate) is not an admission that the aspects of the
invention recited in claims 5, 9, and 10 are not patentably distinct from the
aspects of the invention recited in claims 7, 8, and 12. We agree with
Appellants that the Examiner is not interpreting properly the statement in the
Petition. See Appeal Br. 13.
As the Examiner has not identified disclosure in the cited references
that corresponds to the features of the method as recited in claims 5, 9, and
10, we do not sustain the rejection of these claims.
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DECISION
The Examiner's decision to reject claims 1--4, 7, 8, and 12-14 is
affirmed.
The Examiner's decision to reject claims 5, 9, and 10 is reversed.
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-IN-PART
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