PS5 Luxco S.a.r.l.

Patent Trials and Appeals Board

Feb 9, 2021

2020001924 (P.T.A.B. Feb. 9, 2021)

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.
14/428,207 03/13/2015 Takashi Ohba LL13P00292US0 1901
36491 7590 02/09/2021
Kunzler Bean & Adamson
50 W. Broadway
Suite 1000
Salt Lake City, UT 84101
EXAMINER
NGUYEN, DILINH P
ART UNIT PAPER NUMBER
2894
NOTIFICATION DATE DELIVERY MODE
02/09/2021 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):
docket@kba.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKASHI OHBA and YOSHIHIRO SATO1
____________

Appeal 2020-001924
Application 14/428,207
Technology Center 2800
____________

Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to semiconductor devices. E.g.,
Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from page 9 (Claims
Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Longitude Licensing Limited. Appeal Br. 3.
Appeal 2020-001924
Application 14/428,207

2
1. A semiconductor device having:
a wiring substrate having, on one surface, a recessed portion and
a plurality of connection pads;
a first semiconductor chip mounted in the recessed portion by a
first adhesive member, wherein gaps between the recessed
portion and the first semiconductor chip are filled with the first
adhesive member;
a second semiconductor chip which has a plurality of electrode
pads on an obverse surface of at least one end portion thereof,
and which is stacked on the first semiconductor chip in such a
way that at least one end portion thereof projects out from the
first semiconductor chip, and at least one end portion of the first
semiconductor chip projects out from the second semiconductor
chip; and
a plurality of wires which electrically connect the plurality of
connection pads on the wiring substrate respectively to the
plurality of electrode pads on the second semiconductor chip;
wherein the one end portion of the second semiconductor chip
extends beyond an inside surface of the recessed portion and is
supported on the one surface of the wiring substrate, and the
second semiconductor chip is secured to the one surface of the
wiring substrate and a surface of the first semiconductor chip by
a second adhesive member.
ANALYSIS
Claims 1–6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Uchiyama (US 2013/0069245 A1, published Mar. 21, 2013), Fogal (US
6,563,205 B1, published May 13, 2003), and Lee (US 2012/0319294 A1,
published Dec. 20, 2012).
The only disputed issue in this case is whether the prior art teaches or
suggests the inclusion of an adhesive between the first semiconductor chip
and the recessed portion of the substrate in which the first semiconductor
chip is mounted, as required by claim 1.
Appeal 2020-001924
Application 14/428,207

3
Relying on Figure 18 of Uchiyama, the Examiner finds that Uchiyama
discloses a semiconductor device including most of the limitations of claim
1, but that Uchiyama’s device does not include an adhesive between first
chip 20 and the recessed portion of the substrate in which first chip 20 is
mounted. Final Act. 2–3 (citing Uchiyama Fig. 18). The Examiner finds
that Lee discloses a similar semiconductor device in which adhesive is used
to securely mount first chip 1526 in a recessed portion of a substrate. Id. at
3–4 (citing Lee Fig. 15). The Examiner determines that it would have been
obvious to mount Uchiyama’s first chip using an adhesive “in order to
firmly secure the chip to the recessed portion.” Id.
The Appellant argues that “there is no need to adhere the first
semiconductor chip 20 to the wiring substrate 30 in Uchiyama” because, due
to Uchiyama’s fabrication process, “the entire wiring substrate wraps around
the entire side surface and circuit surface 20a of the first semiconductor
chip.” Appeal Br. 6. The Appellant also argues that “there are no gaps
between the first semiconductor chip 20 and the wiring substrate 30” in
Uchiyama that would accommodate an adhesive. Id.
The Examiner responds that it would have been obvious “to modify
the wiring substrate of Uchiyama with the recessed portion, the gaps
between the recessed portion and the first chip are filled with the first
adhesive member, as taught by Lee, so as to firmly secure the semiconductor
chip to the wiring substrate or to increase the adhesion between the
semiconductor chip and the wiring substrate.” Ans. 4–5.
The Examiner’s rationale is unpersuasive. The Examiner does not
meaningfully respond to the Appellant’s argument that the fabrication
process of Uchiyama renders unnecessary an adhesive between Uchiyama’s
Appeal 2020-001924
Application 14/428,207

4
first chip 20 and Uchiyama’s substrate. The Appellant’s argument is
consistent with Uchiyama, which shows first chip 20 formed in a recess and
occupying the entire space of the recess. See Uchiyama Fig. 18. It not clear
how the addition of an adhesive would benefit Uchiyama’s structure because
chip 20 appears to be secured by the structure itself. See id. Unlike Lee, see
Lee Fig. 15, Uchiyama’s structure does not have gaps around its chip, and
the Examiner has provided no persuasive reason that a person of ordinary
skill in the art would have been motivated to add gaps to Uchiyama’s
structure.
On the record before us, the Examiner has not adequately established
that a person of ordinary skill in the art would have had reason to include an
adhesive between the first semiconductor chip and the recessed portion of
the substrate in which the first semiconductor chip is mounted, as required
by claim 1.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
1–6 103(a) Uchiyama, Fogal, Lee 1–6
REVERSED