Ex Parte Zhao et alDownload PDFPatent Trial and Appeal BoardJul 25, 201311583718 (P.T.A.B. Jul. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/583,718 10/20/2006 Sam Ziqun Zhao 1875.9430001 3727 26111 7590 10/31/2013 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER MONTALVO, EVA Y ART UNIT PAPER NUMBER 2899 MAIL DATE DELIVERY MODE 10/31/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SAM ZIQUN ZHAO, EDWARD LAW, and REZAUR RAHMAN KHAN ____________ Appeal 2012-004594 Application 11/583,718 Technology Center 2800 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-004594 Application 11/583,718 2 Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of July 26, 2013. Our Decision affirmed the Examiner’s rejection Rl of claim 38 under 35 U.S.C. § 102 and rejection R2 of claims 1-6, 8, 10, 14, and 15 under 35 U.S.C. § 103. We have reconsidered our Decision, in light of Appellants' arguments in the Request, and we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We decline to change our prior Decision for the reasons discussed infra. We address Appellants' arguments seriatim: R1. CLAIM 38 UNDER §102 Regarding the claim 38 limitation [d] "wherein the mold compound holds the thermally conducting body in the opening," the Examiner finds: Hosoyamada clearly shows in Fig. 6, a mold compound 6 holds a thermal conducting body 16 in the opening of the substrate 10. The molding compound 6 is adhered to multiple sides of the thermal conducting body 16 in the opening of the substrate 10, thus the thermal conducting body is considered being held by the molding compound. Although the thermal conducting body is also in contact with the printed circuit board 10, the claim language does not indicate that the thermal conducting body is being held in place exclusively by the molding compound. (Ans. 7-8). Appellants contend the Examiner fails to make a prima facie case of anticipation. In particular, Appellants contend the Examiner's findings are merely conclusory allegations because “the Examiner does not cite any portion of Hosoyamada as stating that mold resin 6, by simply contacting Appeal 2012-004594 Application 11/583,718 3 thermally conducting body 16, holds [the] thermally conducting body in place.” (Request 4). Appellants' contentions are not persuasive. The Examiner cited Hosoyamada's Figure 6 as disclosing "the mold compound holds the thermally conducting body in the opening." (Ans. 7-8; Hosoyamada Fig. 6). Hosoyamada's Figure 6 discloses the molding compound 6 and thermally conducting body 16 adhere together when inverted and therefore expressly supports the Examiner's finding that molding compound 6 holds the thermally conducting body 16. Furthermore, the Examiner's technical reasoning supports the finding of inherency that the "mold compound holds the thermally conducting body" in a manner which necessarily flows from the teachings of the applied prior art.1 (Ans. 7-8). Specifically, we find the Examiner's reasoning "[t]he molding compound 6 is adhered to multiple sides of the thermal conducting body 16 in the opening of the substrate 10," reasonably supports the finding Hosoyamada's molding compound necessarily (inherently) holds the thermal conducting body 16, because the molding compound is attached to and therefore holds multiple surfaces of the thermal conducting body 16. (Ans. 7-8; Hosoyamada Fig. 6).2 1 "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). 2 Moreover, the molding compound 6 and thermally conducting body 16 adhere together when inverted, and therefore molding compound 6 is attached to and holds thermally conducting body 16. (See Hosoyamada Fig. 6). Appeal 2012-004594 Application 11/583,718 4 Moreover, the Examiner's technical reasoning is consistent with Appellants' cited support (App. Br. 8; Figs. 5, 6, 7A, 7B, 8, 10, 12E, 12F, 13F, 13G, 15D, and 15E, element 108) for limitation [d] which show the molding compound 108 contacting the thermally conducting body 524. (Appellants’ Fig. 5). Appellants' cited text sections of the Specification (Spec. ¶[0059], ¶[0082], ¶[0092]) do not describe "the mold compound holds the thermally conducting body in the opening." (App. Br. 8). Because Hosoyamada’s prior art package and Appellants' claimed package are substantially identical in structure (both show the molding compound attached to multiple sides of the thermally conducting body) a prima facie case of anticipation has been established.3 (See Hosoyamada Fig. 6; Appellants’ Fig. 5). Notwithstanding Appellants' arguments, we find the weight of the evidence supports the Examiner's finding of anticipation. R2. CLAIM 1 UNDER § 103 Appellants contend it would not have been obvious to combine Shin's Figure 7 package with the IC die facing in a die-up orientation with Khan's thermal conducting body facing in a die-down orientation. (Emphasis added; Request 5-6, App. Br. 16). Appellants further contend Khan's 3 Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Appeal 2012-004594 Application 11/583,718 5 efficient power delivery advantage that metal interposer 1450 offers to the die-down orientation ball grid array package 1400 is not applicable to Shin's Fig. 7 package's die-up orientation. (Emphasis added; Request 5-6, App. Br. 16). Appellants' contentions are not persuasive as they are premised only on Shin's Figure 7 die-up orientation embodiment and fail to consider Shin's teachings of both die-up (Fig. 7) and die-down (Fig. 5) orientations. (Request 6; App. Br. 16; Ans. 9, 5-6). The Examiner finds and we agree, "Shin teaches package devices with a IC die within the substrate opening, where the solder balls are formed on the underside of the substrate; and that package device can be either die-down or die-up package, as shown in Figs. 7 and 5." (Ans. 9). Furthermore, the Examiner's cited motivation for the modification of Shin and Khan, both die-down orientations, would provide an efficient power delivery structure because the combined Shin and Khan packages can maintain Khan's die-down orientation as shown in Khan’s Figure 14.4 (Khan ¶[0005]; Ans. 5-6, 9). Furthermore, it would have been obvious to try both the die-up and die-down orientations because there are only two options (1) die-up and (2) die-down.5 4 We note Khan discloses both die-up and die-down embodiments, which provide efficient power delivery. (Khan Figs. 5 and 14; ¶[0005). Moreover, at least some of Khan's efficient power delivery benefits result from mounting the die to the thermal conducting body, which applies to both the die-up or die-down embodiments. (Id.). 5 When there … are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show Appeal 2012-004594 Application 11/583,718 6 We also find the Examiner's proffered combination of Shin's package with Khan's thermal conducting body and die would have been a combination of familiar elements according to known methods that would have yielded predictable results.6 (Ans. 5-6, 9). Notwithstanding Appellants' arguments, we find the weight of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding rejection R2. CONCLUSION We have considered the arguments raised by Appellants in the Request for Rehearing, but Appellants have not persuaded us that we misapprehended or overlooked any points in rendering our Decision. DECISION We have granted Appellants' request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. that it was obvious under § 103. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) 6 “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Thus, we conclude that claiming a mere plurality of prior art elements used in combination is not a nonobvious distinction over the prior art of record, absent some showing of secondary considerations, such as unexpected results. Appeal 2012-004594 Application 11/583,718 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See also 37 C.F.R. § 41.52(b). DENIED Vsh Copy with citationCopy as parenthetical citation