SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Oct 15, 2021

2021000194 (P.T.A.B. Oct. 15, 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.
15/850,031 12/21/2017 Yu-Te Hsieh ONS01923PD01US 8716
132194 7590 10/15/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
AHMAD, KHAJA
ART UNIT PAPER NUMBER
2813
NOTIFICATION DATE DELIVERY MODE
10/15/2021 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 YU-TE HSIEH
Appeal 2021-000194
Application 15/850,031
Technology Center 2800
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, 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 1–11, 13–16, and 20. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers 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. 2).
Appeal 2021-000194
Application 15/850,031

2
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter (emphasis on the key limitation in dispute):
1. An image sensor package comprising:
a substrate comprising a first side and a second side;
an image signal processor (ISP) comprising a first side
and a second side, wherein the first side of the ISP is coupled to
the first side of the substrate;
a thermally conductive layer coupled between the first
side of the substrate and the first side of the ISP;
a first mold compound encapsulating the second side of
the ISP;
an image sensor comprising a first side and a second side,
wherein the first side is coupled to the first mold compound, the
first mold compound substantially coextensive with a perimeter
of the first side of the image sensor;
an optically transmissive cover coupled to the second
side of the image sensor; and
a polymeric compound encapsulating a portion of the
substrate, the first mold compound, the image sensor, and a
portion of the optically transmissive cover, wherein the
polymeric compound contacts only a portion of a sidewall of
the optically transmissive cover.
Appeal Br. 11 (Claims App.)
Independent claim 8 is directed to an image sensor package similar to
that of claim 1, and independent claim 15 is directed to a method of forming
an image sensor package (Appeal Br. 28–31 (Claims App.)). Each
independent claim recites a key disputed limitation similar to that
emphasized in claim 1 above.
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Application 15/850,031

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lee US 7,227,236 B1 June 5, 2007
de Guzman US 7,576,401 B1 Aug. 18, 2009

REJECTION
Claims 1–11, 13–16, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combined prior art of de Guzman and Lee.
Final Act. 3.
OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection (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 rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
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thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
While Appellant’s Appeal Brief separately addresses each
independent claim, Appellant’s arguments mainly focus on the common key
disputed limitation in each claim (see generally Appeal Br.; Reply Br.). To
the extent independent claim 8 has another limitation that is separately
argued, we shall address this below.
Appellant argues that the Examiner’s proposed modification of de
Guzman’s Figure 10 so that its polymeric encapsulant 130 only contacts a
portion a sidewall of the optically transmissive cover based on Lee renders
de Guzman inoperable and changes its principle of operation (Appeal Br.
13–19) and that the teachings of the references conflict, with Lee teaching
away such that there would have been no reason for one skilled in the art to
modify de Guzman based on Lee (Appeal Br 19–20). Appellant reiterates
these arguments in the Reply Brief and contends that the Examiner is using
impermissible hindsight (Reply Br. 3–4).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
ordinary skill would have made.
We note that “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
[those] references would have suggested to those of ordinary skill in the
art.”). In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Nievelt,
482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references
does not involve an ability to combine their specific structures.”).
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Application 15/850,031

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As pointed out by the Examiner, Lee explicitly teaches in an image
sensor package (similar to de Guzman’s image sensor package) that a
polymeric encapsulant compound may either cover the entire sidewall, or a
partial sidewall, or none of the sidewall of a optically transmissive cover
(Ans. 3, 4; Lee, Figs. 1–3). Second, as pointed out by the Examiner, de
Guzman teaches that its mount 132 may be pressed into the encapsulant
material such that forming a modified encapsulant 130 contacting a portion
of a sidewall of the optically transmissive cover would have been an obvious
alternative arrangement therein (e.g., Ans. 5). Appellant does not
sufficiently explain why such a modification would render de Guzman
inoperable or unsatisfactory. That is, the arguments fail to account for “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” See KSR, 550 U.S. at 418. Contrary to Appellant’s argument that
the edges of mount 122 in de Guzman would no longer rest on the face of
the lid cover 124 if the encapsulant position on the cover sidewall was
modified (Appeal Br. 17), one of ordinary skill, using no more than ordinary
creativity, would have readily appreciated that one could also modify the
mount such that it still rested on the face of the lid cover (for example only,
a small thinning of the angled area of the mount near the sidewall would
permit encapsulant to be on a portion thereof and still maintain the mount
edges on the face of the lid cover). Furthermore, attorney's arguments in a
brief (e.g., of de Guzman’s inoperability when modified as proposed based
on Lee) cannot take the place of evidence. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
Accordingly, Appellant has not shown reversible error in the
Examiner’s position that one of ordinary skill in the art would have readily
Appeal 2021-000194
Application 15/850,031

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inferred from the overall teachings of the applied prior art that de Guzman’s
encapsulant could be applied such that it covered a portion of a sidewall of
its glass cover as exemplified in Lee as one of three alternative arrangements
between encapsulant and image sensor cover and this would have been a
predictable, known alternative arrangement for use in de Guzman (e.g., see
generally Ans.; Final Act. 3–4). Under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” or even routine steps, that an ordinary artisan would employ. Ball
Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009). One of ordinary skill would have readily inferred and
appreciated from the applied prior art as a whole that a known alternative
arrangement of encapsulant material as exemplified in Lee to protect the
electrical components of de Guzman would have been within the skill and
creativity of one of ordinary skill in the art.
Likewise, Appellant’s argument that Lee teaches away from the use of
such an arrangement on de Guzman (Appeal Br. 19–20) is not persuasive for
reasons already detailed above. Whether the prior art teaches away from the
claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). It is well established that a prior art reference must be
considered in its entirety, i.e., as a whole, when determining if it would have
led one of ordinary skill in the art away from the claimed invention. W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983).
One of ordinary skill in the art would have readily appreciated that there are
numerous known arrangements of the relation of the encapsulant to the glass
cover as exemplified in Lee. See In re Susi, 440 F.2d 442, 446 n.3 (CCPA
1971) (Disclosed examples and preferred embodiments do not constitute a
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teaching away from a broader disclosure or non-preferred embodiments.);
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir.
2005) (Even a “statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.”). Appellant has not sufficiently explained why the claimed
subject matter is “more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
With respect to independent claim 8, Appellant further contends that
the Examiner’s proposed modification to extend encapsulant 130 of De
Guzman Figure 10 based on de Guzman Figure 8 is changing the principle
of operation of Figure 10 (Appeal Br. 20–21). This argument also fails to
take into account the ordinary creativity of one of ordinary skill in the art.
As pointed out by the Examiner, de Guzman Figure 10 has protective
encapsulant or adhesive 126 over the pads 120 of the die as Figure 8 has
encapsulant 130 over the pads (Ans. 8; Final Act. 6–7). Accordingly, one of
ordinary skill in the art would have readily appreciated that a single
encapsulant may protect these surfaces and the electrical connectors.
Appellant has also not show error in the Examiner’s rejection of
method claim 15 for similar reasons discussed above and as set out by the
Examiner (Ans. 9–11).
Accordingly, we sustain the Examiner’s rejection of all the claims on
appeal, noting that Appellant does present additional arguments for any of
the dependent claims.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
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Application 15/850,031

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11,
13–16, 20
103 de Guzman, Lee 1–11,
13–16, 20

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