Texas Instruments Incorporated

Patent Trials and Appeals Board

May 6, 2020

2019004266 (P.T.A.B. May. 6, 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.
15/138,298 04/26/2016 Lee Han Meng@ Eugene Lee TI-72549A.1 8505
23494 7590 05/06/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
GARCES, NELSON Y
ART UNIT PAPER NUMBER
2814
NOTIFICATION DATE DELIVERY MODE
05/06/2020 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE EUGENE LEE, and YOU CHYE HOW
Appeal 2019-004266
Application 15/138,298
Technology Center 2800
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 32, 33, 35, 36 and 38–48.3
We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed April 26, 2016 (“Spec.”); Final Office Action dated June 14, 2018
(“Final”); Appeal Brief filed Dec. 14, 2018 (“Appeal Br.”); Examiner’s
Answer dated Mar. 8, 2019 (“Ans.”); and Reply Brief filed May 8, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Texas
Instruments Incorporated. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-004266
Application 15/138,298

2
CLAIMED SUBJECT MATTER
Claim 32, reproduced below, is illustrative of the claimed subject
matter:
32. A method for forming a semiconductor package, the
method comprising:
attaching a semiconductor die to a leadframe, wherein the
leadframe is made by:
etching a conductive sheet from a first side to form
a first region;
etching the conductive sheet from the first side to
form a second region, the first region thinner than the
second region; and
etching the conductive sheet from an opposite
second side, wherein etching the conductive sheet from
an opposite second side creates a plurality of lead lines
between a plurality of bond pads;
electrically connecting the semiconductor die to the
leadframe; and
molding portions of the semiconductor die and the
leadframe using molding compound.
Appeal Br. 9, Claims Appendix (emphasis added).
REJECTIONS
1. Claims 32, 33, 35, 36, 38, 39, and 42–46 are rejected under 35
U.S.C. § 102(a)(1) as anticipated by Bayan (US 6,674,156 B1, issued Jan. 6,
2004).
2. Claims 40, 41, 47 and 48 are rejected under 35 U.S.C. § 103 as
unpatentable over Bayan.

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OPINION
Independent claim 32 and independent claim 43 recite “[a] method for
forming a semiconductor package, . . . wherein the leadframe is made by:
etching a conductive sheet from a first side to form a first region; [and]
etching the conductive sheet from the first side to form a second region, the
first region thinner than the second region.” Appeal Br. 9–11, Claims
Appendix. The Examiner cited Bayan column 3, lines 11–15, for a teaching
of etching to form first and second regions having different thicknesses.
Final 3. In column 3, lines 11–15, Bayan discloses a method that includes
“partially etching a top surface of a substrate panel to form recessed regions
that define a portion of a first and a second set of tie bars and a portion of a
first and second set of contact pads.”
The Appellant argues that the claim 32 and claim 43 etching
limitations do not read on Bayan’s partial etching step because the claims
require etching twice on the first side—etching a first region to a first depth
and etching a second region to a second depth that differs from the first
depth—whereas Bayan etches only once on the first side to a first depth.
Appeal Br. 5. The Examiner disagrees, contending that “the claim language
does not specify that the etching is performed in two separate steps, it simply
requires etching.” Ans. 4 (quoting the Advisory Action dated Sept. 10,
2018). The respective positions of the Appellant and the Examiner raise a
claim interpretation issue.
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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The 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). “[A]lthough a method claim necessarily recites the steps
of the method in a particular order, as a general rule the claim is not limited
to performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order.” Baldwin Graphic Sys, Inc. v. Siebert,
Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008); see also In re Gleizer, 356 Fed.
Appx. 415, 419 (Fed. Cir. Dec. 15, 2009) (non-precedential) (“[U]nless the
steps of a method actually recite or implicitly necessitate a specific order, the
steps are not ordinarily construed to require one.” (citing Interactive Gift
Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)).
Turning first to the language of independent claims 32 and 43, we
note that etching of the conductive sheet’s first side is recited as two,
separate steps—one step for forming a first region, and a second step for
forming a second region having a thickness greater than that of the first
region. Appeal Br. 9–11, Claims Appendix. We find no independent or
dependent claim language that explicitly or implicitly requires a specific
order of the first two etching steps. See id. Nor does the claim language,
considered without reference to the written description, preclude
simultaneously performing the first two etching steps on the conductive
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sheet’s first side to form both a first region and second region having
different depths.
Turning next to the written description, we find the following
disclosure relating to etching of a conductive sheet to form a leadframe:
“Leadframe 200 may be fabricated by a double etch process. A first etch
step 261 removes a portion of the leadframe material to form the bottom half
of lead lines 230–232. A second etch step 262 then removes a portion of the
leadframe material to form the top half of the lead lines and to define the
bond pads.” Spec. ¶ 20. The Specification also describes a triple etch
process. In the triple etch process, “a first etched pattern” is formed as
follows: “first etch mask 410 is applied to sheet 400 . . . . Once the first
mask 410 is in place, exposed regions such as 412, 413 of copper sheet 400
are etched away . . . . The etch process is allowed to proceed to a depth E1 . .
. [that] is less than the thickness of sheet 400.” Id. ¶ 27. “[A] second etched
pattern” is formed by applying second etch mask 420 that may cover
previously etched regions. Id. ¶ 28. “Once the second mask 420 is in place,
exposed regions such as 424 of copper sheet 400 are etched away . . . . The
etch process is allowed to proceed to a depth E2 . . . [that] is less than depth
E1.” Id. ¶ 29. Third mask 430 is then applied to a back side of sheet 400 and
a third etch pattern is formed in a similar manner by etching to a depth E3.
Id. ¶ 30. The Specification discloses that “the order of etching may be
different. For example, mask 420 may be applied first and etching performed
to depth E2, followed by application of mask 410 and etching performed to
depth E1.” Id. ¶ 33. “In another example, mask 430 may be applied to the
bottom side of copper sheet 400 while mask 410 or 420 is applied to the top
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side of copper sheet 400 and then both sides may be etched in a single
operation.” Id.
Having reviewed the claim language in light of the Specification, we
determine that the claims encompass performing the first two etching steps
simultaneously. However, we do not interpret the claims in the manner
proposed by the Examiner— i.e., to broadly encompass etching to a single
depth, resulting in a first (etched) region and a second (unetched) region
(see, e.g., Ans. 4–5)—as such interpretation would render either the first or
the second etching step effectively meaningless. In other words, under the
Examiner’s interpretation the first and second etching steps would achieve
the same end result—a single etched region (or multiple regions etched to
the same depth) on the conductive sheet’s first side, and a single (or
multiple) unetched regions. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d
871, 885 (Fed. Cir. 2008) (refusing to adopt a construction that would render
a claim limitation meaningless); In re Danly, 263 F.2d 844, 847 (CCPA
1959) (“While it may be literally true that any piece of wire could be used to
perform that function, we are of the opinion that the quoted expression,
taken in context, limits the claims to a construction in which a connection
with a source of alternating current is actually made, since any other
interpretation would render the quoted expression virtually meaningless.”).
We agree with the Appellant that the claims require etching both the first
region and the second region on the conductive sheet’s first side, such that
the first and second regions have different depths, both thinner than the
conductive sheet’s unetched thickness.
Because the Examiner’s rejections are based on the Examiner’s
finding that the claims read on Bayan’s method which etches only a single
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region (or regions) to a single depth on a conductive sheet’s first side (see
Final 3; Bayan 3:11–15), we do not sustain the rejection of independent
claims 32 and 43 or the rejections of the dependent claims.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
32, 33, 35,
36, 38, 39,
42–46
102(a)(1) Bayan 32, 33, 35,
36, 38, 39,
42–46
40, 41, 47,
48
103 Bayan 40, 41, 47,
48
Overall
Outcome:

32, 33, 35,
36, 38–48

REVERSED