Bernard Miles. Malofsky et al.

Patent Trials and Appeals Board

Sep 26, 2019

14648629 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/648,629 05/29/2015 Bernard Miles Malofsky 40396-0014 1009
69082 7590 09/26/2019
ULMER & BERNE, LLP
ATTN: DIANE BELL
600 VINE STREET
SUITE 2800
CINCINNATI, OH 45202-2409
EXAMINER
TORNOW, MARK W
ART UNIT PAPER NUMBER
2891
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
dgordon@ulmer.com
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERNARD MILES MALOFSKY,
ADAM GREGG MALOFSKY, and
MATTHEW MCBRAYER ELLISON
__________________

Appeal 2018-009158
Application 14/648,629
Technology Center 2800
____________________

Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 21–29.3 We have jurisdiction under

1 Our Decision refers to the Specification filed May 29, 2015 (“Spec.”); the
Final Office Action dated February 17, 2017 (“Final Act.”); Appellant’s
Appeal Brief filed February 19, 2018 (“Br.”), and the Examiner’s Answer
dated May 18, 2018 (“Ans.”).
2 Appellant is the Applicant, Sirrus, Inc., which, according to the Appeal
Brief, is the real party in interest. Br. 1.
3 Claims 30–40 have been withdrawn from consideration. Final Act. 1.
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35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal relates to electronic assemblies and
underfill for chip packages (see, e.g., claim 21; Spec. ¶ 3). The
Specification discloses that interconnects are conductive structures attached
to metalized pads on the surface of a silicon chip to access electronic devices
within the chip. Id. ¶¶ 4, 5. The Specification describes introducing an
underfill composition into a gap between the chip and external circuitry once
the interconnects are formed. Id. ¶ 5. The Specification discloses that
conventional underfill materials are generally polymer composites or epoxy
resins that can include inorganic particles to modify the underfill’s
coefficient of thermal expansion to more closely match that of the
interconnects. Id. ¶ 6. According to the Specification, next generation
electronic applications require improved materials and chip constructions,
necessitating improved underfill materials. Id. ¶ 7.
Independent claim 21 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
21. An electronic assembly comprising:
an electronic component comprising a plurality of
electrical interconnects;
a substrate comprising a plurality of electrical bonding
pads; and
a first composition disposed between the electronic
component and the substrate, the first composition comprising:
an oligomer or polymer formed from one or more
of a methylene malonate monomer, a methylene beta
ketoester monomer, a methylene beta diketone monomer,
a di-alkyl di-substituted vinyl monomer, and a di-
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haloalkyl di-substituted vinyl monomer; and
a filler material; and
wherein each of the plurality of electrical interconnects
are respectively electrically bonded to one of the plurality of
electrical bonding pads.

REJECTIONS ON APPEAL
I. Claims 21–27 under 35 U.S.C. § 103(a) as being
unpatentable over Ogata4 in view of Narang;5 and
II. Claims 28 and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Ogata and Narang and further in view
of Yoshimura.6
DISCUSSION
Rejection I
Claims 21–27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogata in view of Narang.
The Examiner finds Ogata discloses an electronic assembly including,
among other things, an electronic component, a substrate, and a first
composition (i.e., Ogata’s adhesive sheet) disposed between the electronic
component and the substrate. Final Act. 3. The Examiner finds Ogata’s
adhesive sheet does not meet the composition recited in claim 21, but finds
Narang discloses dialkyl methylene malonates as adhesive materials. Id. at
3–4. The Examiner determines it would have been obvious to use Narang’s
disclosed material for Ogata’s adhesive because Narang discloses the

4 Ogata, US 2005/0106781 A1, published May 19, 2005 (“Ogata”).
5 Narang et al., US 6,183,593 B1, issued Feb. 6, 2001 (“Narang”).
6 Yoshimura et al., US 2007/0222051 A1, published Sept. 27, 2007
(“Yoshimura”).
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material has increased flexibility, elasticity, and stability. Id. at 4. The
Examiner also characterizes such use as selection of a known material based
on its suitability for its intended use. Id.
Appellant contends the Examiner has failed to explain why one of
ordinary skill in the art would have combined the semiconductor device of
Ogata with the adhesive composition of Narang. Br. 7–9. Specifically,
Appellant argues one of ordinary skill in the art would not have looked to
Narang when seeking to improve Ogata’s device because Ogata’s adhesives
necessarily are thermosetting, photocuring, or electron-beam curing
adhesives (i.e., cure via the application of external energy), whereas
Narang’s adhesive polymerizes, such as via a chemical curing initiator. Id.
Appellant further asserts that Narang provides no reason to use its adhesive
in an electronic assembly, and the Examiner has not properly considered
whether there would have been a reasonable expectation of success. Id. at
9–11.
The Examiner responds that Narang discloses its adhesive can be used
for numerous applications and for bonding various types of materials, and
explains that the specific benefits Narang teaches for its adhesive “apply to
the semiconductor bonding arts” because “flexible/elastic adhesives
withstand cracking and stable compounds maintain their known benefits.”
Ans. 2–5.
Appellant’s arguments are persuasive. “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex Inc.,
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550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
The Examiner’s reasoning does not sufficiently articulate why one of
ordinary skill in the art would have used Narang’s material for Ogata’s
adhesive. The Examiner does not identify any evidence supporting the
contention that one of ordinary skill in the art would have recognized
flexibility as desirable in Ogata’s adhesive layer. The stability Narang
teaches relates to stability of its polymerizable monomer /
polydimethylsiloxane mixture prior to polymerization (a mechanism Ogata’s
adhesives do not use), not the stability of the polymerized adhesive during
its use. Narang 3:17–19, 3:26–30, and 5:53–66. Moreover, Appellant’s
arguments present persuasive technical reasoning that there are fundamental
differences between Ogata’s adhesive and Narang’s material. For example,
Ogata provides a thermosetting adhesive for the purpose of removing voids
by softening the adhesive material prior under pressure prior to heat curing.
See Ogata ¶¶ 63–64. Narang’s disclosed materials are polymerized through
use of initiators. Narang 6:63–66. The Examiner does not point to evidence
of record to show that one skilled in the art would have had a reasonable
expectation that Narang’s material would have been suited for or capable of
use in Ogata’s void removal process.
Although Narang discloses a broad range of applications for its
adhesive (i.e., both industrial and medical applications) and the bonding of
various types of materials (Narang 1:10–21), the Examiner does not
sufficiently explain how these teachings suggest the use of Narang’s
adhesive in the field of semiconductor devices, or in the particular
application taught by Ogata.
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For the foregoing reasons, Appellant’s arguments are persuasive of
reversible error in the Examiner’s § 103(a) rejection of claim 21 over Ogata
and Narang. Claims 22–27 depend from claim 21.
Accordingly, we do not sustain the Examiner’s § 103(a) rejection of
claims 21–27 over Ogata and Narang.
Rejection II
Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ogata and Narang and further in view of
Yoshimura.
The Examiner does not rely on Yoshimura to remedy the
deficiencies discussed above with regard to the combination of Ogata
and Narang. Therefore, we do not sustain the Examiner’s § 103(a)
rejection of claims 28 and 29.
DECISION
On the record before us and for the reasons given in Appellant’s
Appeal Brief and above, we reverse the Examiner’s rejections.

REVERSED