Xilinx, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 20212021000747 (P.T.A.B. Oct. 4, 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. 16/044,363 07/24/2018 Jaspreet Singh Gandhi X-5046 US 1999 164051 7590 10/04/2021 PATTERSON & SHERIDAN, LLP - - XILINX 24 GREENWAY PLAZA SUITE 1600 HOUSTON, TX 77046 EXAMINER ZARNEKE, DAVID A ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): Pair_Eofficeaction@pattersonsheridan.com psdocketing@pattersonsheridan.com xilinxipl@xilinx.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASPREET SINGH GANDHI and SURESH RAMALINGAM Appeal 2021-000747 Application 16/044,363 Technology Center 2800 Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. FRANKLIN, 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 7–13 and 15–27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Xilinx, Inc. Appeal Br. 3. Appeal 2021-000747 Application 16/044,363 2 CLAIMED SUBJECT MATTER Claim 7 is illustrative of Appellant’s subject matter on appeal and is set forth below: 7. A method for forming an interconnect of an integrated circuit package, the method comprising: depositing a solder ball on a pillar coupled to first circuitry formed in a first substrate; exposing the solder ball to an oxygen containing environment to form a uniformly thick oxidation layer on the solder ball; and converting the oxidation layer on the solder ball to a non- oxide solder protection layer. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Su US 7,906,425 B2 Mar. 15, 2011 Song US 8,237,276 B2 Aug. 7, 2012 Shimizu US 2011/0014785 A1 Jan. 20, 2011 Zenner US 2012/0052677 A1 Mar. 1, 2012 THE REJECTIONS 1. Claims 7–13, 15–17, and 27 are rejected under 35 U.S.C. § 103 as being unpatentable over Shimizu in view of Song, Su, and Zenner. 2. Claims 18–26 are rejected under 35 U.S.C. § 103 as being unpatentable over Shimizu in view of Song, Su, and Zenner. 3. Claims 7–13, and 15–27 are rejected under 35 U.S.C. § 103 as being unpatentable over Zenner in view of Su. Appeal 2021-000747 Application 16/044,363 3 OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (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.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. We refer to pages 3–8 of the Final Action regarding the Examiner’s stated position for Rejection 1. On page 4 of the Answer, the Examiner further explains the position in Rejection 1 by stating that the secondary references of Su and Zenner are used to address separate claim limitations. The Examiner explains that Su’s teaching of converting an oxidation layer into a nonoxide solder protection layer is used, and that the Examiner only uses Zenner’s teaching that the initial oxidation layer can be applied uniformly thick. Ans. 4. The Examiner states that the oxidation layer of Su and the one of Zenner are not combined. The Examiner states that Zenner is used merely to show that the claimed oxidation layer can be deposited uniformly thick, and that no other part of Zenner is imported into the rejection. Ans. 4. Appeal 2021-000747 Application 16/044,363 4 Beginning on page 2 of the Reply Brief, Appellant argues that the Examiner errs as the Examiner is picking and choosing elements from the prior art to arrive at the claimed invention. Appellant points out that one “cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.” Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1371 (Fed. Cir. 2000) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988)). Reply Br. 3. We agree. The Examiner recognizes that the primary reference of Shimzu fails to teach converting the oxidation layer on the solder ball to a nonoxide solder protection layer, so the Examiner relies upon Su for teaching this claim element. Final Act. 4. The Examiner recognizes that Shimzu fails to teach the oxidation layer is uniformly thick. Final Act. 5. The problem with Su is that Su does not teach that the oxidation layer is uniformly thick [emphasis added]. In fact, Su involves a native oxide as explained by Appellant on page 12 of the Appeal Brief. See also page 5 of the Reply Brief. The Examiner relies upon Zenner for teaching that it is known that an oxidation layer can be deposited as being uniformly thick. Final Act. 5. However, we agree with Appellant that the Examiner’s reliance upon Zenner in this manner is divorced from the manner in which the uniformly thick deposition is achieved by Zenner. As such, a prima facie case has not been made that uniformly thick deposition is achieved or suggested in the proposed modification without the method set forth in Zenner. Furthermore, as stated by Appellant on pages 5–6 of the Reply Brief, the deposition process of Zenner is incompatible with the technique of producing the oxide layer of Su for the reasons discussed therein. Appeal 2021-000747 Application 16/044,363 5 In view of the above, we reverse Rejection 1. We reverse Rejections 2 and 3 for the same reasons. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7–13, 15– 17, 27 103 Shimizu, Song, Su, Zenner 7–13, 15– 17, 27 18–26 103 Shimizu, Song, Su, Zenner 18–26 7–13, 15–27 103 Zenner, Su 7–13, 15–27 Overall Outcome 7–13, 15–27 REVERSED Copy with citationCopy as parenthetical citation