Ex Parte Zhang et al

Board of Patent Appeals and Interferences

Aug 26, 2011

11438657 (B.P.A.I. Aug. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JIAN ZHANG, DAVIDE LOUIS SIMONE,
CHRISTOPHER MICHAEL CARTER,
LAURA JEAN MEYER, CHARLES ADRIAN BECKER,
FLORIAN JOHANNES SCHATTENMANN,
SANDEEP SHRIKANT TONAPI,
SLAWOMIR RUBINSZTAJN, and
CHRISTOPHER FRED KEIMEL

________________

Appeal 2009-008995
Application 11/438,657
Technology Center 2800
_________________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from final
rejections of claims 1-12 and 14-32. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

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STATEMENT OF THE CASE
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:

1. An electronics package, comprising
an underflll layer having a surface that defines an opening;
a bump structure disposed within the opening, wherein the bump
structure comprises an inherently electrically conductive polymer.
Rejections
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1-6, 14-18, 20, and 22-32 as being unpatentable over the
combination of Sterrett (US 6,586,843 B2; July 1, 2003) and
Nuytkens (US 6,552,555 B1; Apr. 22, 2003) (Final Action 2-8);
2. Claims 7, 8, and 21 as being unpatentable over the combination of
Sterrett, Nuytkens, and Danvir (US 2004/0169275 A1; Sep. 2, 2004)
(Final Action 10-12); and
3. Claims 9-12 and 19 as being unpatentable over the combination of
Sterrett, Nuytkens, Danvir, and Miller (US 2003/0220432 A1; Nov.
27, 2003) (Final Action 12-15).
I. Appellants’ Contentions
Rejection over Sterret and Nuytkens
Appellants contend independent claim 1 is patentable along with the
dependent claims 2, 15-18, 22, 24, and 27-32 because it is improper to
combine Sterrett and Nuytkens to find that the claim 1 recited “inherently
electrically conductive polymer” bump is taught or suggested (Br. 4-6).
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In addition to relying on dependencies from claim 1, Appellants
further assert patentability for the following dependent claims by contending
that Sterrett and Nuytkens are deficient either alone or in combination
because
 Claims 3 and 4 recite distinguishing limitations directed to “radiation”
for curing the underfill material (Br. 6-7);
 Claims 5-6 recite distinguishing limitations directed to “B-stageable
underfill layer material” (Br. 7);
 Claim 14 recites a distinguishing limitation that “the bump structure is
free of electrically conductive filler” (Br. 7);
 Claim 20 recites a distinguishing limitation that “the bump structure . .
. comprises electrically conductive particles having an average
particle size in a range of less than about 1000 nanometers” (Br. 7);
 Claim 23 recites a distinguishing limitation that the bump has a cure
temperature in a “range of less than about 150 degrees Celsius” (Br.
8); and
 Claims 25 and 26 respectively recite distinguishing limitations that the
cured bump structure electrical resistivity values are less than 10
-5

Ohm centimeter (claim 25) and 10
-3
Ohm centimeter (claim 26) (Br.
8).
Issues on Appeal
1. Did the Examiner err because Sterrett and Nuytkens cannot
properly be combined under § 103(a) and found to teach or suggest
the claim 1 recited “inherently electrically conductive polymer”
bump?
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2. Did the Examiner err in rejecting claims 3-6, 14, 20, 23, 25, and 26
because Sterrett and Nuytkens alone or in combination fail to teach
or suggest disputed limitations?

ANALYSIS
Claims 1, 2, 15-18, 22, and 27-32
We reviewed Appellants‟ arguments for patentability of independent
base claim 1 (Br. 4-6) in light of the Examiner‟s rejection (Ans. 5) and we
conclude that the Examiner did not err in the rejection.
The Examiner finds Sterrett teaches the recited electronics package
structure except for an “inherently electrically conductive polymer” bump
structure (Ans. 5), which the Examiner finds taught by Nuytkens (id.).
Appellants do not dispute the Examiner‟s factual findings from either cited
reference (see Br. 4-6).
The Examiner relying on these findings reasons that:
It would have been obvious to one having ordinary skill in the art at
the time the invention was made to use an inherently conductive
polymer as taught by Nuytkens, since Nuytkens states at column 7
line 20-35 that such a modification would negate the necessity of
fillers which might limit the elasticity.

(Ans. 5) Appellants also do not dispute that Nuytkens discloses that bump
materials filled with electrically conductive particles limit elasticity whereas
conductive, elastic materials can be used for bumps. Instead, Appellants
contend that “[c]ombination or modification [of the cited references] . . .
results in inoperative devices for either of Sterrett et al. or Nuytkens et al.,
and thus are improper” (Br. 6).
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Appellants commence their arguments by pointing out that Nuytkens
discloses an integrated circuit testing apparatus having a probe card with
elastomeric bumps that do not remain secured to a tested chip (Br. 5). The
Examiner responds that “Nuytkens is relied on to teach the inherently
conductive material. The [E]xaminer is not suggesting that the Nuytkens
reference be modified with the teaching of Sterrett as is argued by
[A]ppellant[s]. . . . Sterrett is modified by Nuytkens which discloses the
inherently conductive material” (Ans. 17-18). This response by the
Examiner is consistent with the record.
Appellants next assert that Nuytkens bump materials are cured prior to
chip contact to avoid adhesion whereas Sterrett seeks adhesion (Br. 5-6).
The Examiner responds that “Nuytkens is relied on to disclose the inherently
conductive polymer” (Ans. 18), and that both references disclose curing
bump materials (id.). Therefore, the Examiner reasons that the Nuytkens
conductive bump material can be used with the Sterrett disclosed process.
Appellants have not responded to the Examiner‟s further explanations
and reasoning. Based on the record, we not only agree with the Examiner‟s
findings from the references, but also conclude that the Examiner‟s position
as to modifying Sterrett with Nuytkens taught conductive material is
reasonable and is premised on an articulated rationale. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (Claiming “a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field . . . must do more than yield a predictable
result” to be patentable. (Citation omitted)).
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For the forgoing reasons, we sustain the rejection of claim 1 and also
sustain the rejection of dependent claims 2, 15-18, 22, 24, and 27-32, which
are not separately argued.
Claims 3 and 4
Claim 3 depends from claim 1 and recites that the “underfill layer is a
radiation curable polymeric.” Appellants contend claim 3 is patentable
because the claimed element is not a product-by-process limitation as
indicated by the Examiner (see Final Action 3-4) (Br. 6). In the Response to
Argument section of the Answer, the Examiner indicates other reasons for
the rejection, namely
1. Sterrett discloses the same exact material [i.e., polyimide] as
disclosed by the [A]ppellant[s]. See Sterrett column 3 lines 20-25.
See Appellants[‟] specification page 5 paragraph 0024.

2. Sterrett discloses the polymerization of the layer (225) in column 4
lines 20-25.

(Ans. 19). Appellants are silent concerning the Examiner‟s further indicated
findings. Based on reviewing the record, including the Examiner‟s
expanded citations to Sterrett disclosures and Appellants‟ Specification, we
agree with and adopt the Examiner‟s findings. There being no contradicting
evidence or argument, we agree with and adopt the Examiner‟s conclusion
that Sterrett teaches the claim 3 recited limitation.
Claim 4 depends from claim 3 and recites that “the radiation is
ultraviolet radiation.” Appellants contend claim 4 also is patentable because
the claimed element is not a product-by-process limitation as indicated by
the Examiner (see Final Action 4) (Br. 6-7). The Examiner indicates that
claim 4 covers “materials by the process in which they are cured” (Ans. 20).
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Further, the Examiner indicates that “certain materials respond to Ultraviolet
radiation, and some respond to heat . . . .” (id.). Based on the record, we
agree with the Examiner‟s conclusion that this claim merely recites a known
type of radiation for curing a material, which does not render the material
patentable. KSR, 550 U.S. at 417 (“If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”); see
also In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“The patentability of
a product does not depend on its method of production.” (Citation omitted)).
For the forgoing reasons, we sustain the rejection of claims 3 and 4.
Claims 5 and 6
Though claim 5 is listed as being argued in Appellants‟ Brief (Br. 7),
no argument for patentability over the rejection (Final Action 5) is found to
be asserted. Accordingly, we sustain the rejection of claim 5.
Claim 6 depends from claim 5 and recites that a “B-stageable underfill
layer material comprises a solvent when in an uncured and not B-staged
state.” The Examiner finds this limitation taught by Sterrett in column 3,
lines 44-54, and indicates that “[t]his cited column and lines show that the
material is a B-stageable material and as such it has to comprise a solvent
when uncured and not B-staged” (Final Action 5). Appellants do not dispute
that Sterrett teaches B-stageable material, but, instead, contend that the
Examiner is “factually incorrect in stating that „it has to comprise a solvent‟,
when clearly it does not” (Br. 7). We disagree with this contention because
Appellants‟ Specification discloses that “B-staging . . . and related terms and
phrases, may include at least partially solidifying a material by one or more
of heating for a determined amount of time, optionally under vacuum, to
remove some or all of a solvent . . . ” (¶ [0017]). Accordingly, the
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Examiner‟s conclusion is reasonable and consistent with Appellants‟
Specification, namely that “uncured and not B-staged” material, which is
claimed, comprises a solvent. In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir.
2002) (Claims are interpreted as broadly as is reasonable using ordinary and
accustomed term meanings so as to be consistent with the Specification.).
Also, the Examiner responds to Appellants‟ argument by referencing the
Sterrett disclosure of B-stage material in column 3, lines 20-25, and then
pointing out that this same material is disclosed in the Specification in
paragraph [0024] as is addressed supra for claim 3 (Ans. 20).
Based on reviewing the record, we agree with and adopt the
Examiner‟s findings and we agree with and adopt the Examiner‟s conclusion
that Sterrett teaches the claim 6 recited limitation. Accordingly, we sustain
the rejection of claim 6.
Claim 14
Claim 14 depends from claim 1 and recites that the electrically
conductive bump structure is free of electrically conductive filler. The
Examiner indicates for the rejection that Sterrett teaches this limitation
(Final Action 5). Appellants contend that “Sterrett et al. does not disclose,
suggest or contemplate any bump structure without electrically conductive
filler” (Br. 7). In response the Examiner indicates that “Sterrett [in] column
6 lines 13-20 . . . states that „[b]ump 620 may be . . . a plurality of materials
including solder paste combinations (e.g., tin/lead, tin/silver/copper,
tin/silver, etc.)[.]‟ It is to be understood that solder paste combinations are
free of filler and are conductive” (Ans. 21). The record for this rejection
further includes the rejection of base claim 1 that covers the electrically
conductive polymer bump, which, as addressed supra, is taught by
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Nuytkens. Reviewing this entire record, we agree with and adopt the
Examiner‟s findings and we agree with and adopt the Examiner‟s conclusion
that Sterrett and Nuytkens teach the claim 14 recited subject matter.
Accordingly, we sustain the rejection of claim 14.
Claim 20
Claim 20 depends from claim 1 and recites that the bump structure
“comprises electrically conductive particles having an average particle size
in a range of less than about 1000 nanometers.” Appellants acknowledge
that Sterrett teaches “particles with a size „in a range of 0.1 microns to 100
microns‟” and argue that “the claimed range is less than the disclosed range”
(Br. 7). Since the Sterrett taught range is 100 nanometers to 100,000
nanometers, we disagree with Appellants‟ argument because we find Sterrett
teaches the claimed less than about 1000 nanometers. We, accordingly,
sustain the rejection of claim 20.
Claim 23
Claim 23 depends from claim 1 and recites that the bump structure has
a cure temperature of less than about 150 degrees Celsius. Appellants
acknowledge that Nuytkens teaches a bump material having a cure
temperature of less than 120 degrees Celsius (Br. 8). Appellants, however,
argue that Sterrett discloses an underfill material having a cure temperature
of about 250 degrees Celsius, which Appellants contend means that Sterrett
and Nuytkens are incompatible for combining because of disparate material
cure temperatures (id.). The Examiner responds to Appellants‟ contention
by referencing the Sterrett disclosure of B-stage material in column 3, lines
20-25, and use of the same material in the Specification in paragraph [0024]
as is addressed supra for claim 3 (Ans. 23). Relying on the cited evidence
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for coincidence of Sterrett material with the Specification disclosure, the
Examiner responds by pointing out that the references are compatible
because they address the same material consistent with Appellants‟
Specification (id.). Appellants are also silent to this response from the
Examiner. Based on reviewing the record, we agree with and adopt the
Examiner‟s factual findings and we, accordingly, agree with and adopt the
Examiner‟s conclusion that the references teach the claim 23 recited
limitation. Therefore, we sustain the rejection of claim 23.
Claims 25 and 26
Dependent claims 25 and 26 respectively recite that the cured bump
structure electrical resistivity values are less than 10
-5
Ohm centimeter (claim
25) and 10
-3
Ohm centimeter (claim 26). In rejecting these claims the
Examiner reasons that “where the general conditions of a claim are disclosed
in the prior art, discovering the optimum or workable ranges involves only
routine skill in the art” (Final Action 7 (Citation omitted)). Relying on
attorney argument, without citation to evidence, Appellants contest this
reasoning by contending that “electrical conductivity is a function of matrix
material, filler material, filler configuration, filler amount, and other factors
balanced against performance requirements, such as viscosity” (Br. 8). The
Examiner responds that Appellants have “made only allegations with regards
to the other factors against performance requirements, such as viscosity. It
is unclear as to what „function of matrix material‟ the [A]ppellant[s] [are]
referring to. This „function‟ is not disclosed anywhere in [A]ppellants[‟]
disclosure to date. It is also unclear how viscosity has anything to do with
electrical conductivity” (Ans. 24). In view of Appellants‟ silence as to this
response and the reasonable position articulated by the Examiner, we agree
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with and adopt the Examiner‟s findings and we agree with and adopt the
Examiner‟s conclusion as to the references teaching the claims 25 and 26
recited limitations. See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588,
595 (Fed. Cir. 1997) (“„[A]rguments of counsel cannot take the place of
evidence lacking in the record.‟” (Citation omitted)). Accordingly, we
sustain the rejection of claims 25 and 26.
II. Appellants’ Contentions
Rejection over Sterrett, Nuytkens, and Danvir
With respect to claims 7 and 8, which depend from base claim 1,
Appellants substantively continue in contending that it is improper to
combine Sterrett and Nuytkens and find base claim 1 limitations taught or
suggested (Br. 9-11). (Issue 1 supra). Further, according to Appellants, the
asserted deficiencies of Sterrett and Nuytkens are not cured by Danvir (Br.
11).
In addition to relying on the dependency from claim 1, Appellants
further assert patentability for claim 21 by contending that Danvir fails to
teach or suggest a recited flux agent as being part of the bump structure and
not a separate layer (Br. 11).
Issues on Appeal
3. Did the Examiner err in rejecting claim 21 because Danvir fails to
teach or suggest the recited “bump structure comprises a fluxing
agent”?
ANALYSIS
Claims 7 and 8
Appellants‟ patentability contentions for claims 7 and 8, as identified
above, are substantive repeats of those asserted for base claim 1, which we
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disagree with as addressed supra. Accordingly, we sustain the rejection of
claims 7 and 8.
Claim 21
Claim 21depends from claim 1 and recites that “the bump structure
comprises a fluxing agent.” The Examiner finds “Danvir . . . teaches that it
is known to dispose a flux layer on the bump” (Final Action 12). Reviewing
Danvir, we agree with and adopt the Examiner‟s finding. Appellants argue
that while Danvir may disclose a flux layer on a bump, “the claim indicates
that the flux agent is part of the bump structure, and therefore is not a
separate layer” (Br. 11). The Examiner responds by noting that it is
“unclear” as to how Appellants interpret claim 21 as covering a flux agent
that is part of the bump structure (Ans. 26).
We agree with the Examiner because Appellants, without explanation
or citation to evidence, merely assert that claim 21 excludes the flux agent as
a separate layer on the bump structure. The Examiner further responds that
it is “unclear . . . how „a flux layer on the bump‟ is indicative of the flux
layer not being part of the bump structure” (id.). Based on the record and
common and ordinary term meanings, we conclude that the Examiner has
used the broadest reasonable interpretation for the recited bump structure
and flux agent. Thrift, 298 F.3d at 1364. We agree with and adopt the
Examiner‟s conclusion that Danvir teaches the claim 21 recited limitation.
Therefore, we sustain the rejection of claim 21.
III. Appellants’ Contentions
Rejection over Sterrett, Nuytkens, Danvir, and Miller
Regarding claims 11, 12, and 19, which depend from base claim 1,
Appellants substantively continue in contending that it is improper to
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combine Sterrett and Nuytkens and find base claim 1 limitations taught or
suggested (Br. 11-13). (Issue 1 supra).
In addition to relying on dependencies from claim 1, Appellants
further assert patentability for claims 9 and 10 by contending that Miller is
deficient because no distinctions are made between electrically conductive
and insulator listed materials (Br. 13).
Issues on Appeal
4. Did the Examiner err in rejecting claims 9 and 10 because Miller
fails to teach or suggest the recited limitations?

ANALYSIS
Claims 11, 12, and 19
Appellants‟ patentability contentions for these claims, as identified
above, are substantive repeats of those asserted for base claim 1, which we
disagree with as addressed supra. Accordingly, we sustain the rejection of
claims 11, 12, and 19.
Claims 9 and 10
Claim 9 depends from claim 8, which depends from base claim 1.
Claim 8 recites that “the underfill layer comprises a filler” and claim 9
recites that “the filler comprises one or more of an oxide, a nitride, a boride,
or combination of two or more thereof.” Claim 10, which depends from
claim 9, recites that “the filler is electrically insulating filler.”
The Examiner finds Miller teaches the claim 9 listed materials and the
claim 10 recited “electrically insulating filler” (Final Action 12-13).
Appellants acknowledge that Miller “disclose[s] the indicated thermally
conductive materials” (Br. 13), but contend that Miller does not distinguish
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between electrically conductive and insulator listed materials (id.). The
Examiner acknowledges that Miller does not “explicitly state” which of the
listed materials are conductors or insulators, but indicates that an ordinarily
skilled artisan would know which are the conductor and insulator materials
(Ans. 27). Based on the record, we agree with and adopt the Examiner‟s
findings and conclusion as to Miller teaching the disputed limitations.
Accordingly, we sustain the rejection of claims 9 and 10.

CONCLUSIONS
1. The Examiner did not err because Sterrett and Nuytkens are properly
combined under § 103(a) and found to teach the claim 1 recited
limitations.
2. The Examiner did not err in rejecting claims 3-6, 14, 20, 23, 25, and
26 because Sterrett and Nuytkens teach the disputed limitations.
3. The Examiner did not err in rejecting claim 21 because Danvir teaches
the recited “bump structure compris[ing] a fluxing agent.”
4. The Examiner did not err in rejecting claims 9 and 10 because Miller
teaches the recited limitations.
5. This record shows that claims 1-12 and 14-32 are unpatentable.

ORDER

The Examiner‟s decision rejecting claims 1-12 and 14-32 is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

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