SEMICONDUCTOR COMPONENTS INDUSTRIES, LLCDownload PDFPatent Trials and Appeals BoardOct 15, 20212021000259 (P.T.A.B. Oct. 15, 2021) Copy Citation 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. 16/204,097 11/29/2018 Yu-Te HSIEH ONS01923CD01US 9466 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 2021-000259 Application 16/204,097 Technology Center 2800 ____________ Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1, 2, and 4–20 under 35 U.S.C. § 102(a)(1) as being anticipated by de Guzman (US 7,576,401 B1, issued Aug. 18, 2009). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE and enter a new ground of rejection. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Semiconductor Components Industries, LLC (Appeal Br. 2). Appeal 2021-000259 Application 16/204,097 2 Claim 1 is illustrative of the appealed subject matter (emphasis added to identify a key disputed limitation): 1. A method of making a semiconductor package, the method comprising: providing a substrate; coupling one or more die to the substrate; electrically coupling the one or more die to the substrate using one or more connectors; encapsulating the one or more connectors and at least a portion of one of the one or more die using a mold compound; coupling an additional die to one of the one or more die after encapsulating at least the portion of the one or the one or more die; electrically coupling the additional die to the substrate with one or more connectors; and coupling a housing to the substrate over the one or more die and the additional die immediately after electrically coupling the additional die to the one or more die. Appeal Br. 17 (Claims App.). Independent claims 7 and 13 are each directed to a method of making a semiconductor package with a similar key disputed limitation as highlighted above in claim 1 (Appeal Br. 18–20 (Claims App.)). OPINION PRINCIPLES OF LAW [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Appeal 2021-000259 Application 16/204,097 3 “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. (citations omitted)); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”) ANALYSIS The Examiner relies mainly upon de Guzman’s Figure 10 in the anticipation rejection (Final Act. 3; Ans. 4). Appellant argues that the Examiner has taken an unreasonably broad interpretation of the recited “coupling a housing to the substrate over the one or more die and the additional die immediately after electrically coupling the additional die to the one or more die” (claim 1, emphasis added; claims 7 and 13 have similar limitations) and thus, has not shown how de Guzman identically discloses this method step. A preponderance of the evidence supports Appellant’s position. Appellant points out that the encapsulant 130 of de Guzman that the Examiner relies upon as the housing in each independent claim is not over the claimed dies (claims 1 and 7) and is not over the claimed lid at a top opening of the housing (as recited in claim 13) and thus cannot be Appeal 2021-000259 Application 16/204,097 4 encompassed by the claimed steps/features (Appeal Br. 10, 12). The Specification consistently illustrates that the recited housing is over at least a portion of the top surface of the relevant dies and transparent lid, similar to a roof being over a structure. Indeed, the plain and ordinary meaning of “over” requires that if one thing is over another thing, it covers part or all of the another thing. We agree with Appellant that the claim when read in its entirety and in light of the Specification, requires that the housing be over (i.e., cover) at least a portion of the claimed dies as recited in claims 1 and 7, and over at least a portion of the claimed lid at a top opening of the housing as recited in claim 13. De Guzman does not show this feature. We are also mindful that: [t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e. an interpretation that is consistent with the specification. In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal quotation omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that is “beyond that which was reasonable in light of the totality of the written description” in the Specification). Even though there is no special definition of “over” disclosed in the Specification, Appellant’s position is that encapsulant that is merely adjacent to the recited relevant die or lid cannot reasonably be construed as a housing over the dies and lid. The Examiner’s position that the encapsulant 130 is Appeal 2021-000259 Application 16/204,097 5 over the relevant dies or lid because it is adjacent the sidewalls and lid (Ans. 5) is an unreasonably broad interpretation of the aforementioned claim limitations when considered in light of the Specification as well as in light of the entirety of the plain meaning of the claim. In doing so, the Examiner erred in finding that de Guzman disclose the claimed subject matter. As such, we cannot sustain the anticipation rejection. Accordingly, the Examiner’s 35 U.S.C. § 102 rejection of all the claims is reversed. New Ground of Rejection of claims 1, 2, and 4–20 under 35 USC § 112(a) for failing to comply with the written description requirement The written description “must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation and quotations omitted, alteration in the original). The test is whether the disclosure “conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. Each of the independent claims was amended during prosecution to recite that the housing was coupled to the substrate over the recited dies or lid “immediately after electrically coupling” the second die to the first die (claims 1 and 7) or “immediately after electrically coupling” the second die to the substrate (claim 13). Appellant urges that the “‘immediately after’ language precludes any method steps being performed between the step of coupling the housing and electrically coupling the additional die to the one or more die” (Appeal Br. 14). We agree that this is the plain meaning of “immediately after”. However, Appellant’s Specification does not describe Appeal 2021-000259 Application 16/204,097 6 this invention as is now claimed. Appellant relies upon paragraphs 39, 42 and 43 of the Specification as support for this limitation (Appeal Br. 5–7). These paragraphs describe that a glass lid is coupled to the additional die using an adhesive, “then the housing” is coupled to the substrate and over the glass lid (e.g., Spec. ¶ 43). We do not find, nor does Appellant identify, a disclosure in the Specification that properly describes coupling a housing immediately after (that is, without any intervening steps) electrically coupling the second die to the first die (claims 1 and 7) or immediately after electrically coupling the second die to the substrate (claim 13). Accordingly, the Specification lacks written description for the “immediately after” limitation as recited in each independent claim. CONCLUSION The Examiner’s 102 rejection is reversed. A new ground of rejection pursuant to 37 C.F.R. § 41.50(b) is made. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4–20 102(a)(1) de Guzman 1, 2, 4–20 1, 2, 4–20 112(a) Written description 1, 2, 4–20 Overall Outcome 1, 2, 4–20 1, 2, 4–20 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of Appeal 2021-000259 Application 16/204,097 7 rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation