Ex Parte Zhang et alDownload PDFBoard of Patent Appeals and InterferencesAug 26, 201111438657 (B.P.A.I. Aug. 26, 2011) Copy Citation 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. Appeal 2009-008995 Application 11/438,657 2 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). Appeal 2009-008995 Application 11/438,657 3 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? Appeal 2009-008995 Application 11/438,657 4 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). Appeal 2009-008995 Application 11/438,657 5 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)). Appeal 2009-008995 Application 11/438,657 6 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). Appeal 2009-008995 Application 11/438,657 7 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 Appeal 2009-008995 Application 11/438,657 8 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 Appeal 2009-008995 Application 11/438,657 9 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 Appeal 2009-008995 Application 11/438,657 10 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 Appeal 2009-008995 Application 11/438,657 11 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 Appeal 2009-008995 Application 11/438,657 12 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 Appeal 2009-008995 Application 11/438,657 13 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 Appeal 2009-008995 Application 11/438,657 14 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. Appeal 2009-008995 Application 11/438,657 15 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 kis Copy with citationCopy as parenthetical citation