SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

May 21, 2020

15136605 - (D) (P.T.A.B. May. 21, 2020)

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.
15/136,605 04/22/2016 Yushuang Yao ONS01783US 2980
132194 7590 05/21/2020
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
TRINH, HOA B
ART UNIT PAPER NUMBER
2813
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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 YUSHUANG YAO, CHEE HIONG CHEW, and
ATAPOL PRAJUCKAMOL
Appeal 2019-004575
Application 15/136,605
Technology Center 2800
Before BRIAN D. RANGE, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, 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, 5, and 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “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 2019-004575
Application 15/136,605

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to press-fit pins for
connecting a semiconductor package to a printed circuit board. Spec. ¶ 1.
Claim 1 is the only independent claim on appeal3 and is illustrative:
1. A semiconductor package comprising:
a substrate;
a case coupled to the substrate, the case comprising a
cover with the plurality of pins molded into and fixedly coupled
thereto, the cover comprising a potting opening therethrough;
and
a plurality of press-fit pins;
wherein the pins are electrically and mechanically
coupled to the substrate.

REJECTIONS AND REFERENCE
Rejection 1. The Examiner rejects claim 1 as indefinite under 35
U.S.C. § 112. Non-Final Act. 2.
Rejection 2. The Examiner also maintains (Ans. 3) the rejection of
claims 1, 5, and 6 under 35 U.S.C. § 102 as anticipated by Mattiuzzo, US
9,263,820 B2, Feb. 16, 2016. Non-Final Act. 3.
Rejection 3. As an alternative, the Examiner rejects claims 1, 5, and 6
under 35 U.S.C. § 103 as obvious over Mattiuzzo. Id.

2 In this Decision, we refer to the Non-Final Office Action dated August 9,
2018 (“Non-Final Act.”), the Appeal Brief filed November 19, 2018
(“Appeal Br.”), the Examiner’s Answer dated March 29, 2019 (“Ans.”), and
the Reply Brief filed May 17, 2019 (“Reply Br.”).
3 The Examiner has allowed independent claim 19 along with claim 20
which depends from claim 19. Non-Final Act. 5.
Appeal 2019-004575
Application 15/136,605

3
OPINION
Rejection 1, Indefiniteness. The Examiner rejects claim 1 as
indefinite. Non-Final Act. 2. Appellant does not dispute this rejection.
Appeal Br. 8. We, therefore, summarily affirm the rejection.4
Rejection 2, Anticipation.
Claim 1 recites, among other things, a cover. The Examiner finds that,
at Figure 13, Mattiuzzo teaches such a cover 460. Appeal Br. 3. The
Appellant, however, argues that structure 460 is not a cover of a case of a
semiconductor package (as claim 1 recites) but is, instead, a PC board.
Appeal Br. 10–11.
The preponderance of the evidence supports Appellant’s position.
Mattiuzzo indicates that structure 460 is a substrate such as a PC board by
stating:
FIGS. 13–14 show the manner in which the completed electrical
module 400 of FIG. 11 is secured to a substrate 460 such as a PC
board. In FIG. 13 the press fit pins 430 are aligned with the through-
holes 450 in PC board 460.
Mattiuzzo 5:56–59.
The Examiner argues that, under a broadest reasonable construction in
view of Appellant’s Specification, Mattiuzzo’s PC board 460 is a cover.
Ans. 4–5. Claim 1, however, requires that the recited “semiconductor
package” comprise a “case” and further requires that the “case” comprise the
recited cover. The Examiner has not adequately explained how Mattiuzzo

4 The Examiner’s rejection does not reject claims 5 and 6 as indefinite (Non-
Final Act. 2), but those claims depend from claim 1. In the event of further
prosecution, we leave resolution of the definiteness of claims 5 and 6 to the
Examiner.
Appeal 2019-004575
Application 15/136,605

4
teaches a semiconductor package that comprises a case having claim 1’s
recited cover. Rather, the portion of Mattiuzzo cited above indicates that
substrate 460 is not part of a semiconductor package.
We, thus, do not sustain the Examiner’s rejection.
Rejection 3, Obviousness. The Examiner’s obviousness rejection
focuses on the claim 1’s “molded” recitation. Non-Final Act. 3. The
Examiner’s rejection does not provide a basis as to why a person of skill in
the art would have found it obvious to modify Mattiuzzo to reach a
semiconductor package comprising a case comprising claim 1’s recited
cover. We, thus, also do not sustain the Examiner’s alternative obviousness
rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 112 Indefiniteness 1
1, 5, 6 102 Mattiuzzo 1, 5, 6
1, 5, 6 103 Mattiuzzo 1, 5, 6
Overall
Outcome
1 5, 6
TIME PERIOD FOR RESPONSE
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 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART