SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Jan 29, 2021

2020001790 (P.T.A.B. Jan. 29, 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.
15/926,127 03/20/2018 Yusheng LIN ONS01931CC01US 5544
132194 7590 01/29/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
LEE, KYOUNG
ART UNIT PAPER NUMBER
2895
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
ipdocket@iptech.law
patents@onsemi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUSHENG LIN, FRANCIS J. CARNEY,
YENTING WEN, CHEE HIONG CHEW, and
AZHAR ARIPIN
Appeal 2020-001790
Application 15/926,127
Technology Center 2800
Before KAREN M. HASTINGS, MERRELL C. CASHION, JR., and
SHELDON M. MCGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Semiconductor
Components Industries, LLC. Appeal Br. 3.
Appeal 2020-001790
Application 15/926,127

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CLAIMED SUBJECT MATTER
The claims are directed to embedded stacked die packages. See Spec.
¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter
(emphasis added to highlight a key disputed term):
1. A semiconductor package, comprising:
a first semiconductor die at least partially encapsulated in
a first mold layer;
a first redistribution layer (RDL) coupled with the first
mold layer, the first redistribution layer electrically coupled with
the first semiconductor die;
a second semiconductor die coupled with the first
redistribution layer;
the second semiconductor die and the first redistribution
layer at least partially encapsulated in a second mold layer; and
a second redistribution layer (RDL) coupled with the
second mold layer, the second redistribution layer electrically
coupled with the second semiconductor die and the second
redistribution layer at least partially encapsulated in a third mold
layer.

Independent claims 9 and 17 are each similarly directed to a
semiconductor package (Appeal Br. Claims Appendix 25, 27).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Gan US 2013/0105991 A1 May 2, 2013

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Application 15/926,127

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REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor regards as the invention. Non-Final Act. 3.
Claims 1–3, 5–7, 9–11, and 13–15 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Gan. Non-Final Act. 4.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s § 112 rejection (e.g., see generally Ans.). In re Jung, 637 F.3d
1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice
of requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the § 112 rejection generally for the reasons expressed
by the Examiner in the Non-Final Office Action and the Answer. We
procedurally reverse, and thus do not reach the merits of, the Examiner’s
§ 102 rejection.
We add the following primarily for emphasis.
The § 112, Second Paragraph, Rejection
During prosecution, claims are definite if they “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner found the language of each independent claim (claims
1, 9, and 17) indefinite, since each claim requires that various components
(including a redistribution layer) are “at least partially encapsulated” by
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Application 15/926,127

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another (mold) layer component, and there is no definition or standard set
out in the Specification by which to ascertain how much needs to be
encapsulated to be “at least partially” encapsulated (Non-Final Act. 3).
Appellant points out that the Specification describes in paragraphs 78 and 81
that a mold layer at least partially encapsulates a relevant component and
shows in Figures 8 and 11 respectively that such component is surrounded
on more than one side by the mold layer such that one of ordinary skill
would have understood that the term means that more than one side of the
relevant component needs to be encapsulated (Appeal Br. 13, 14 (citing
Spec. ¶¶ 78, 81); Reply Br. 2–5).
In prosecution before the PTO, “[i]t is the applicants’ burden to
precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997). The purpose of this requirement is to provide the
public with adequate notice of the boundaries of protection involved. The
time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210–12
(BPAI 2008) (precedential).
Notably, as pointed out by the Examiner, the Specification does not
describe any definition or provide any standard to determine how much of a
second side needs to be encapsulated in order to be at least partially
encapsulated (Ans. 5, 6). Indeed, “at least partially encapsulated” is a
contradiction in terms because “encapsulate” means to enclose or completely
surround as if in a capsule. There is no doubt one of ordinary skill in the art
would have understood what encapsulating a component would have meant.
However, we agree with the Examiner that the Specification examples are
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Application 15/926,127

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not adequate to provide any meaningful standard or definition for the claim
term “at least partially encapsulated” even assuming arguendo that
Appellant’s position was adopted. However, it also may well be reasonable
to presume than any amount of coverage on merely one side of a component
meets the required “at least partially encapsulated.”2 In light of the different
possible scopes of this term which results in multiple interpretations
applicable to the claims, it is appropriate for Appellant to amend the claims
to make clear which interpretation is required.
Accordingly, we affirm the Examiner’s § 112 rejection of claims 1–20
for indefiniteness.
The § 102 Rejection
We are unable to determine the propriety of the prior art rejection at
this time. This is because the metes and bounds of the recited components
“at least partially encapsulated” by another component required by the
claimed invention(s) of claims 1, 9, and 17 render the appealed claims
indefinite as previously discussed, and Appellant’s arguments are focused on
whether the prior art discloses “partially encapsulated” layers. Appeal Br.
18–21. Review of the rejection under 35 U.S.C. § 102 would require
considerable speculation as to the scope of the claims. Such speculation
would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We,

2 It has been established that “the fact that the specification describes only a
single embodiment, standing alone, is insufficient to limit otherwise broad
claim language.” Howmedica Osteonics Corp. v. Wright Medical Tech., Inc.,
540 F.3d 1337, 1345 (Fed. Cir. 2008) (citing Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc); Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1327–28 (Fed. Cir. 2002)).

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Application 15/926,127

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therefore, procedurally reverse the rejection of claims 1–3, 5–7, 9–11, and
13–15 under 35 U.S.C. § 102.
We emphasize that this is a technical reversal of the rejection under 35
U.S.C. § 102, and not a reversal based upon the merits of the rejection.
CONCLUSION
The Examiner’s § 112 rejection of all the claims on appeal is
AFFIRMED.
We reverse the Examiner’s § 102 rejection.
The Examiner’s decision to reject claims 1–20 is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–20
1–3, 5–7, 9–
11, 13–15
102(a)(1) Gan 1–3, 5–7, 9–
11, 13–15
Overall
Outcome
1–20

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