Ex Parte Zhuang

Board of Patent Appeals and Interferences

Sep 29, 2009

11044933 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WEIDONG ZHUANG
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Appeal 2009-002023
Application 11/044,933
Technology Center 2800
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Decided: September 29, 2009
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT
and ROBERT E. NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-13 and 19-23.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

1 Claims 14-18 were previously cancelled.
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INVENTION
The invention is directed to a hermetically sealed semiconductor
device that creates a higher reliability. See generally Specification 1-4.
Claim 1 is representative of the invention and reproduced below:
1. A semiconductor package comprising:
a flat substrate, said substrate including a first major
surface and a second major surface opposite said first major
surface, and an opening therethrough;
a first electrical terminal on said first major surface of
said substrate;
a second terminal attached to said second major surface
of said substrate and being wider than said opening such that
said second electrical terminal closes said opening;
a semiconductor die disposed in said opening and having
a first electrode electrically connected to said first electrical
terminal and a second electrode disposed opposite said first
electrode and electrically connected to said second electrical
terminal; and
a hermetically sealed cover attached to said first major
surface and closing said opening;
wherein said first electrical terminal and said second
electrical terminal each have a surface for external electrical
connection.

REFERENCES
Hurst US 5,939,772 Aug. 17, 1999

Hyoudo US 6,285,067 B1 Sep. 4, 2001

Basho US 6,921,971 B2 Jul. 26, 2005
(filed Jan. 15, 2004)

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REJECTIONS AT ISSUE
The Examiner rejected claims 1-4, 7, 8, and 10-13 under 35 U.S.C.
§ 102(e) as being anticipated by Basho. Ans. 3-5.
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
being unpatentable over Basho. Ans. 6.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Basho in view of Hurst. Ans. 6-7.
The Examiner rejected claims 19-23 under 35 U.S.C. § 103(a) as
being unpatentable over Basho in view of Hyoudo. Ans. 7-9.

ISSUES
Rejection of claims 1-4, 7, 8, and 10-13 under 35 U.S.C. § 102(e) as being
anticipated by Basho

Appellant argues on pages 4-6 of the Appeal Brief and pages 1-2 of
the Reply Brief that the Examiner’s rejection of claims 1-4, 7, 8, and 10-13
is in error. Claim 1 is the only independent claim and Appellant argues that
Basho does not teach the claim limitations of claim 1. App. Br. 5; Reply Br.
2.
Thus, with respect to claims 1-4, 7, 8, and 10-13 Appellant’s
contentions present us with the issue: has Appellant shown that the
Examiner erred in finding that Basho teaches the claim limitations set forth
in claim 1?

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Rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Basho

Appellant argues on page 6 of the Appeal Brief and page 3 of the
Reply Brief that the Examiner’s rejection of claims 5 and 6 is in error.
Appellant reasons that claims 5 and 6 are allowable based upon their
dependency on claim 1. App. Br. 6; Reply Br. 3. Thus, Appellant’s
arguments with respect to the Examiner’s rejection of claims 5 and 6 present
us with the same issues as claim 1.

Rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Basho in view of Hurst

Appellant argues on page 6 of the Appeal Brief and page 3 of the
Reply Brief that the Examiner’s rejection of claim 9 is in error. Appellant
reasons that claim 9 is allowable based upon its dependency on claim 1.
App. Br. 6; Reply Br. 3. Thus, Appellant’s arguments with respect to the
Examiner’s rejection of claim 9 presents us with the same issues as claim 1.

Rejection of claims 19-23 under 35 U.S.C. § 103(a) as being unpatentable
over Basho in view of Hyoudo

Appellant argues on pages 6-7 of the Appeal Brief and page 3 of the
Reply Brief that the Examiner’s rejection of claims 19-23 is in error.
Appellant reasons that claims 19-23 are allowable based upon their
dependency on claim 1. App. Br. 6-7; Reply Br. 3. Additionally, Appellant
argues that Hyoudo does not teach the deficiencies found in claim 1. App.
Br. 6-7; Reply Br. 3. Thus, Appellant’s arguments with respect to the
Examiner’s rejection of claims 19-23 present us with the same issues as
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claim 1 and the additional issue: has Appellant shown that the Examiner
erred in finding that Basho in view of Hyoudo teaches the claim limitations
set forth in claim 1?

FINDINGS OF FACT
Basho
1. Basho discloses a hermetically sealed semiconductor package
wherein the top portion of the semiconductor element 51 is
connected to a wiring conductor 46 and a lead terminal 47 through
a bonding wire 53. Col. 23, ll. 19-38 and l. 67- col. 24, l. 2 and
Fig. 3.
2. The bottom portion of the semiconductor element 51 is attached to
a copper layer 44a by an adhesive 52. The adhesive 52 can be
resin, glass, or brazing materials. Col. 23, ll. 47-50 and Fig. 3.
3. The top copper layer 44a is attached to a lower copper layer 44b by
a through metal layer 43. Col. 23, ll. 22-29 and Fig. 3.
Hyoudo
4. Hyoudo discloses an electronic device wherein a semiconductor
chip 63 contains a pad on the upper surface that is electrically
connected to an electrode 62 by a bonding wire 64 wherein the
electrode 62 is connected to an external connector 34 by via holes
35. Col. 6, l. 57-col. 7, l. 13 and Fig. 9A.
5. The semiconductor chip 63 contains an island 60 on the bottom
surface that is electrically connected to an external connector 32 by
via holes 35. Col. 6, l. 57-col. 7, l. 13 and Fig. 9A.

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PRINCIPLES OF LAW
Office personnel must rely on Appellant’s disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).

ANALYSIS
Rejection of claims 1-4, 7, 8, and 10-13 under 35 U.S.C. § 102(e) as being
anticipated by Basho

Appellant’s contentions have persuaded us that the Examiner’s
rejection of claims 1-4, 7, 8, and 10-13 is in error. Independent claim 1
recites “a semiconductor die disposed in said opening and having a first
electrode electrically connected to said first electrical terminal and a second
electrode disposed opposite said first electrode and electrically connected to
said second electrical terminal.” Appellant argues that the Basho’s adhesive
layer 52 is not an electrode because there is no indication that the bottom of
the semiconductor element is electrically conductive. App. Br. 5; Reply Br.
2. We agree with the Appellant.
Basho discloses a semiconductor package wherein the top portion of
the semiconductor element 51 is connected to a wiring conductor 46 and a
lead terminal 47 through a bonding wire 53. FF 1. The bottom portion of
the semiconductor element 51 is attached to a copper layer 44a by an
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adhesive 52. FF 2. The adhesive 52 can be resin, glass, or brazing
materials. FF 2. The top copper layer 44a is attached to a lower copper
layer 44b by a through metal layer 43. FF 3. The Examiner interprets the
adhesive layer 52 as being equivalent to Appellant’s claimed second
electrode and the copper layer 44 (44a and 44b) as being equivalent to
Appellant’s claimed second electrical terminal. Ans. 10-11. However, there
is no indication in the reference that the copper layer 44 can be or is used for
anything other than a heat sink. In addition, as noted by Appellant, there is
no indication in the reference that the under side of the semiconductor
element is electrically conductive. As a result, there is no indication that the
adhesive 52 is used as an electrode and thus, we cannot sustain the
Examiner’s rejection of claims 1-4, 7, 8, and 10-13.

Rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Basho

Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claims 5 and 6. Claims 5 and 6 ultimately depend upon claim 1
and as such, include the same limitations discussed supra with respect to
claim 1. Appellant’s arguments present the same issues discussed with
respect to claim 1 (App. Br. 6; Reply Br. 3). Therefore, we reverse the
Examiner’s rejection of claims 5 and 6 for the reasons discussed supra with
respect to claim 1.

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Rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Basho in view of Hurst

Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 9. Claim 9 ultimately depends upon claim 1 and as such
includes the same limitations discussed supra with respect to claim 1.
Appellant’s arguments present the same issues discussed with respect to
claim 1 (App. Br. 6; Reply Br. 3). Therefore, we reverse the Examiner’s
rejection of claim 9 for the reasons discussed supra with respect to claim 1.
However, as discussed infra we find that the combination of Basho and
Hyoudo teaches the limitations of claim 1 and we enter a new rejection of
claim 1. Therefore, we now enter a new rejection of claim 9 as being
obvious over Basho and Hyoudo and Hurst. In rejecting claim 9 we apply
the Examiner’s reasoning concerning the teachings of Hurst as applicable to
the limitations of claim 9 to our findings concerning claim 1 and the
combined teachings Basho and Hyoudo.

Rejection of claims 19-23 under 35 U.S.C. § 103(a) as being unpatentable
over Basho in view of Hyoudo

Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 19-23. Initially, we acknowledge that claims
19-23 are dependent upon claim 1 and as discussed supra, Basho does not
teach all of the limitations of claim 1. However, as discussed infra, we find
that Hyoudo teaches the features deficient in the rejection of claim 1.
Appellant argues that the combination of Basho and Hyoudo does not
teach the claim limitations of claim 1, and as a result, claims 19-23 are
allowable based upon their dependency of claim 1. App. Br. 6; Reply Br. 3.
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As noted supra, claim 1 recites “a semiconductor die disposed in said
opening and having a first electrode electrically connected to said first
electrical terminal and a second electrode disposed opposite said first
electrode and electrically connected to said second electrical terminal.”
Hyoudo teaches these claim limitations.
Hyoudo discloses an electronic device wherein a semiconductor chip
63 contains a pad on the upper surface that is electrically connected to an
electrode 62 by a bonding wire 64 wherein the electrode 62 is connected to
an external connector 34 by via holes 35. FF 4. The Examiner has found
that the pad is the same as the first electrode and the electrode 62 is the first
electrical terminal. Ans. 7-8. The semiconductor chip 63 contains an island
60 on the bottom surface that is electrically connected to an external
connector 32 by via holes 35. FF 5. The Examiner has found that the island
60 is the same as the second electrode and the external connector 32 is the
same as the second electrical terminal. Ans. 8. We agree with the Examiner
and find that the evidence suggests that the limitations of claim 1 are found.
Appellant has not provided sufficient evidence to the contrary. Therefore,
we sustain the Examiner’s rejection of claims 19-23.

New Rejection of claims 1-8, and 10-13
As discussed supra, we reverse the Examiner’s rejection of claims 1-
4, 7, 8, and 10-13 as we do not find that Basho discloses a second electrode
disposed opposite said first electrode and electrically connected to said
second electrical terminal, as disclosed in claim 1. However, we find that
Hyoudo does teach these claim limitations. Thus, we find that Hyoudo
resolves the argued deficiency of the rejection of independent claim 1. We
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consider Hyoudo’s teaching of attaching a semiconductor chip to an island
and electrically connecting an external connector to the island by via holes
to be a known technique of hermetically sealing a semiconductor chip.
Instituting this manufacturing technique into Basho’s hermetically sealed
semiconductor chip package represents nothing more than a combination of
known techniques which when combined yield the predictable result of a
second electrode attached to a semiconductor chip with an external
connector or external electrode. As Appellant has not asserted that any of
the other limitations of claims 1-8 and 10-13 define over Hyoudo, we adopt
the Examiner’s findings regarding the uncontested limitations of these
claims and reject these claims under 35 U.S.C. § 103(a), as unpatentable
over Basho in view of Hyoudo. We designate this as a new rejection under
37 C.F.R. § 41.50(b).

CONCLUSIONS OF LAW
Appellant have shown that the Examiner erred in finding that Basho
teaches the claim limitations set forth in claim 1.
Appellant has not shown that the Examiner erred in finding that Basho
in view of Hyoudo teaches the claim limitations set forth in claim 1.

SUMMARY
The Examiner’s decision to reject claims 1-4, 7, 8, and 10-13 under 35
U.S.C. § 102(e) and claims 5, 6, and 9 under 35 U.S.C. § 103(a) is reversed.
The Examiner’s decision to reject claims 19-23 under 35 U.S.C.
§ 103(a) is affirmed.
The decision of the Examiner is affirmed-in-part. Additionally, we
enter a new rejection of claims 1- 13 under 35 U.S.C. § 103(a).
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Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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).

AFFIRMED-IN-PART; 37 C.F.R. 41.50(b)

KIS

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