SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Patent Trials and Appeals Board

Aug 26, 2021

2021000192 (P.T.A.B. Aug. 26, 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.
15/837,857 12/11/2017 Yusheng LIN ONS02505US 4615
132194 7590 08/26/2021
SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC (AS)
5005 E. McDowell Road
Maildrop A700
Phoenix, AZ 85008
EXAMINER
NGUYEN, DAO H
ART UNIT PAPER NUMBER
2818
NOTIFICATION DATE DELIVERY MODE
08/26/2021 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
Appeal 2021-000192
Application 15/837,857
Technology Center 2800
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, 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 1–13. See Non-Final Act. 3, 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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. 2.
Appeal 2021-000192
Application 15/837,857
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CLAIMED SUBJECT MATTER
Claims 1 and 8, reproduced below, are illustrative of the claimed
subject matter:
1. A semiconductor package comprising:
one or more die comprising a first side and a second side
opposite the first side, the first side of the die comprising one or
more external connection points;
a layer of one or more metals comprised on the second side
of the one or more die;
a second layer of one or more metals comprised on a first
layer of one or more metals comprised on the first side of the die
wherein the second layer is thicker than the first layer;
a molding compound encapsulating five sides of the one
or more die and partially encapsulating the second layer of one
or more metals;
a plurality of interconnects coupled to the second layer of
one or more metals; and
two or more bumps coupled to the plurality of
interconnects;
wherein at least a portion of each of the two or more bumps
is outside a perimeter of the one or more die.
8. A semiconductor package comprising:
one or more die comprising a first side and a second side
opposite the first side;
two or more copper pillars coupled on the second side of
the one or more die;
a layer of aluminum coupled between the one or more die
and each of the two or more copper pillars;
a molding compound encapsulating five sides of the one
or more die and partially encapsulating the two or more copper
pillars;
a routing layer of metal coupled to the two or more copper
pillars; and
a plurality of solder bumps coupled to the routing layer;
wherein at least a portion of the solder bumps are outside
a perimeter of the one or more die.

Appeal 2021-000192
Application 15/837,857
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Claims Appendix (Appeal Br. 13, 15).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Lee US 9,406,658 B2 Aug. 2, 2016
Otremba US 8,975,711 B2 Mar. 10, 2015

REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–13 102 Otremba
1, 8 102 Lee

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 102 rejection based on Otremba for the reasons expressed
in the Non-Final Office Action of November 14, 2019 and the Answer. We
add the following primarily for emphasis.
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Application 15/837,857
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Anticipation of Claim 1 (Otremba)
Appellant argues that the Examiner reversibly erred in rejecting claim
12 over Otremba because “no structure with integrally formed elements has
those elements ‘coupled’ to the structure” and therefore does not disclose “a
plurality of interconnects coupled to the second layer of one or more metals”
as recited in claim 1. Appeal Br. 8. Appellant argues that the prior art
structure “are integrally formed elements . . . and at no time were separable
and then attached or associated with the structure.” Id; see also Reply Br. 5
(arguing that “Otremba says nothing about multiple metallization steps used
to form the layer” and that Otremba does not disclose “a two-step process”).
Appellant argues that Figure 7H as well as paragraph 56 of the Specification
“clearly indicates that the plurality of interconnects 132 are formed
separately from the second layer of metal 142 as they are plated over the
metal 142 and the molding compounds 130.” Id.
Appellant’s argument is unpersuasive because it is incommensurate in
scope with the claim language. Claim 1, an apparatus claim, recites structure
and not a method or process under which the structures are formed, i.e.,
whether plurality of interconnects are formed separately from the layers of
metals. Appellant does not offer a definition different from the Examiner’s
proposed interpretation of the term “coupled.” Compare Ans. 7–9 (providing
various dictionary definition of the term “coupled” including “fasten[ed]
together physically, chemically, and integrally” and “united chemically

2 Appellant argues against the anticipation rejection of claims 1, 2, 4, 6, 7,
10, 12, and 13 based on Otremba as a group with claim 1 as the
representative claim. See Appeal Br. 6–8. These claims stand or fall together
with respect to the anticipation rejection based on Otremba. See id.; see also
37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2021-000192
Application 15/837,857
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together”), with Reply Br. 5 (“There is no need to turn to the dictionary for a
definition of “couple” – it is illogical to argue that a single unitary structure
is coupled to itself.”).3 Appellant’s argument does not explain why the claim
term “a plurality of interconnects coupled to the second layer of one or more
metals” is structurally distinguishable from the prior art and does not
identify reversible error in the Examiner’s findings in support of the
rejection.
Anticipation of Claim 8 (Otremba)
Appellant’s arguments with regard to claim 8 mirror those raised for
claim 1 (Appeal Br. 8 (“Again, the Examiner is arguing that a portion of the
same structure, integrally formed at the same time, is ‘coupled’ to itself.”)
and are unpersuasive for the reasons provided supra. We further note that
Appellant's briefing does not comply with 37 C.F.R. § 41.37(c)(1)(iv),

3 Appellant also argues that the analysis in the Examiner’s Answer
constitutes a new ground of rejection which the Board should disregard and
that the Board should decide the appeal solely on the basis of the Office
Action of November 14, 2019. Reply Br. 4. From the outset, any request to
seek review of the primary examiner’s failure to designate a rejection as a
new ground of rejection in an examiner’s answer must be by way of a
petition to the Director under 37 CFR § 1.181 within two months from the
entry of the examiner’s answer and before the filing of any reply brief.
Appellant chose not to do so and failure to timely file such a petition will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection. 37 C.F.R. § 41.40(a). See also, e.g., Manual of
Patent Examining Procedure § 1002.02(c) 6 and § 1207.03(b) (9th ed., Rev.
7, November 2015); In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002)
(Issues regarding whether an examiner abused his or her discretion in
matters of practice and procedure are not subject to appeal). Accordingly, we
address the rejection based on the Examiner’s findings and reasons
expressed in both the Final Office Action and the Answer.
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Application 15/837,857
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which requires that “any claim(s) argued separately or as a subgroup shall be
argued under a separate subheading that identifies the claims by number.”
Anticipation of Claims 3 & 9 (Otremba)
The dispositive limitation of dependent claims 3 and 9 is that the
semiconductor package “further comprising one of a first passivation layer
and a redistribution layer (RDL).”
Appellant argues that the Examiner erred because the rejections “fail
entirely to point to any additional structure in Otremba that is a
‘redistribution layer’ as recited in the claims.” Appeal Br. 8. As the
Examiner, points out, however, the claims require “one of a first passivation
layer and a redistribution layer (RDL)” – that is, either “a first passivation
layer” or “a redistribution layer (RDL).” Ans. 11. Appellant’s argument that
claims 3 and 9 require “both pieces of structure” (Appeal Br. 9) is therefore
unpersuasive for being incommensurate in scope with the claim language.
Because Appellant’s argument does not dispute the Examiner’s finding that
Otremba discloses “a first passivation layer” (compare Appeal Br. 8, with
Non-Final Act. 4 (citing Otremba 2:65–3:17, 3:33–58 for the disclosure), no
reversible error has been identified here.4

4 For the first time, Appellant raises in the Reply Brief the argument that
“the device of Otremba does not need the solder resist layers 52, 53 to
function in any passivating or even insulating capacity . . . .” Reply Br. 6. An
argument raised for the first time in a Reply Brief can be considered waived
if Appellants do not explain why it could not have been raised previously.
See Ex parte Nakashima, 93 USPQ 2d 1834 (BPAI 2010) (informative)
(explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief); Ex parte Borden, 93 USPQ 2d 1473, 1477
(BPAI 2010) (informative) (“Properly interpreted, the Rules do not require
the Board to take up a belated argument that has not been addressed by the
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Application 15/837,857
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We again note that Appellant’s briefing does not comply with
37 C.F.R. § 41.37(c)(1)(iv), which requires that “any claim(s) argued
separately or as a subgroup shall be argued under a separate subheading that
identifies the claims by number.”
Anticipation of Claims 5 & 11 (Otremba)
The dispositive limitation of dependent claims 5 and 11 is that the
semiconductor package “further comprising a second molding compound on
the first side of the one of more die.”
Appellant argument that “solder resist is a different material from
what Otremba itself teaches is a molding compound” (Appeal Br. 9) is
unpersuasive because it is incommensurate with the claim language which
does not require a particular material of any of the structures recited.
Appellant also argues that “layers 52, 53 are not coupled to what
would be a first side of the die 10, 20 of Otremba – they are coupled over
layers 50, 51 which are attached to the second side of the die 10, 20 of
Otremba.” Appeal Br. 9. The Examiner responds by pointing to Figures 2L
through 2N of Otremba illustrating the configuration required by claims 5
and 11. Ans. 12. Appellant does not address these findings by the Examiner.
See Reply Br. 6.5 In any event, the claim language requires no more than the

Examiner, absent a showing of good cause.”). In this case, the argument in
the opening brief with regard to claims 3 and 9 is limited to whether the
prior art discloses “any additional structure . . . that is a ‘redistribution
layer.’” Appeal Br. 8–9. We therefore decline to consider the argument
raised in the Reply Brief as the Examiner has not had an opportunity to
consider and respond to such an argument.
5 For the first time, Appellant raises in the Reply Brief the argument that the
prior art “the solder resist layers 52, 53 never perform a molding function.”
Reply Br. 6. An argument raised for the first time in a Reply Brief can be
considered waived if Appellants do not explain why it could not have been
Appeal 2021-000192
Application 15/837,857
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second molding compound being “on the first side of the one or more die” –
without precluding additional structures and also without requiring the
second molding compound to be directly “on” the side of the die.
We again note that Appellant’s briefing does not comply with 37
C.F.R. § 41.37(c)(1)(iv), which requires that “any claim(s) argued separately
or as a subgroup shall be argued under a separate subheading that identifies
the claims by number.”
Anticipation of Claims 1 & 8 (Lee)
We sustain the Examiner’s rejection of claims 1–13 based on Otremba
and find it unnecessary to reach the rejection of claims 1 and 8 based on Lee.

CONCLUSION
The Examiner’s anticipation rejection based on Otremba is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13 102 Otremba 1–13
1, 8 102 Lee6
Overall
Outcome
1–13

raised previously. See Ex parte Nakashima, 93 USPQ 2d at 1834; Ex parte
Borden, 93 USPQ 2d at 1477. We decline to consider the argument raised in
the Reply Brief as the Examiner has not had an opportunity to consider and
respond to such an argument.
6 As indicated above, we find it unnecessary to reach the rejection of claims
1 and 8 based on Lee.
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Application 15/837,857
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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