Ex Parte 7,164,205 et al

Patent Trial and Appeal Board

Oct 24, 2012

90009863 (P.T.A.B. Oct. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,863 12/20/2010 7,164,205 12480-000051/US/RXA 5533
30593 7590 10/25/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHARP KABUSHIKI KAISHA
____________________

Appeal 2012-012255
Reexamination Control 90/009,863
Patent 7,164,205 B2
Technology Center 3900
____________________

Before SALLY C. MEDLEY, JONI Y. CHANG, and JENNIFER S. BISK,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Patent Owner, Sharp Kabushiki Kaisha, appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 53-57 and 62-66 of U.S.
Patent 7,164,205 B2 (the “’205 patent”). Ans. 3. Claims 1-4, 6-40, and 44-48
have been canceled. Claims 5, 41-43, 49-52, and 58-61 have been found
patentable. The reexamination proceeding arose from a request for ex parte
reexamination of the ’205 patent filed by the Patent Owner on December 20,
2010. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(b), and 306.
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

2
We AFFIRM.
The Invention
The ’205 patent relates to a semiconductor carrier film with several
layers. ’205 patent Abstract.
Claim 53 reproduced below with emphasis added, is illustrative of the
claimed subject matter.
(New) A semiconductor device, comprising:
a semiconductor carrier film including (i) a base film having an
insulating property, (ii) a barrier layer provided on the base film, the
barrier layer being made of a nickel-chrome alloy, an amount of
chrome in the barrier layer is 15% to 50% by weight, (iii) a wire layer
provided on the barrier layer, the wire layer being made of a
conductive material including copper; the wire layer and barrier layer
forming a wire pattern with adjacent wires, and (iv) an electric field
intensity ranging from 3.0 x 105 to 2.7 x 106 V/m between the adjacent
wires of the wire pattern; and
a semiconductor element bonded to the wire layer.
The Rejections
1. Claims 53-57 and 62-66 stand rejected under 35 U.S.C. § 112, ¶ 1 as
failing to comply with the written description requirement. Ans. 4-5.
2. Claims 53-57 and 62-66 stand rejected under 35 U.S.C. § 112, ¶ 2 as
indefinite. Ans. 6.
3. Claims 53-55 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bergkessel (JP 03-173511 A; Mar. 30, 2001) and Yamaguchi
(JP 2002-198401; July 12, 2002). Ans. 6-13.
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

3
4. Claim 56 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bergkessel, Yamaguchi, and Ota (JP 06-120630; Apr. 28, 1994). Ans.
13-14.
5. Claim 57 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bergkessel, Yamaguchi, and Iwane (JP 2001-176918; June 29, 2001).
Ans. 14-15.
6. Claims 62-64 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bergkessel, Yamaguchi and Admitted Prior Art. Ans. 15-16.
7. Claim 65 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bergkessel, Yamaguchi, Admitted Prior Art, and Ota. Ans. 16-18.
8. Claim 66 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bergkessel, Yamaguchi, Admitted Prior Art, and Iwane. Ans. 18-19.

ANALYSIS
The Written Description Rejection
The Examiner rejects claims 53-57 and 62-66 under 35 U.S.C. § 112,
¶ 1, as failing to comply with the written description requirement. Ans. 4-5.
The Examiner finds that the claims, all of which were added during the
reexamination proceeding, “contain[] subject matter that was not described
in the specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention.” Ans. 4. Specifically, the Examiner
finds that the claim limitation “an electric field intensity ranging from 3.0 x
105 to 2.7 x 106 V/m between the adjacent wires of the wire pattern” is not
supported by the specification. Ans. 4-5 (citing In re Wertheim, 541 F.2d
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

4
257 (CCPA 1976)). The Examiner explains that the specification discloses
an electric field intensity only for the specifically disclosed combination of
wiring line pitch (the space between adjacent wires in the wiring pattern)
and applied voltage for a wiring migration test. Id. (citing ’205 patent, cols.
8 and 9). The Examiner finds that the claimed field intensity range would
require a wiring line pitch that is narrower than the minimum disclosed of 15
µm. Ans. 5. In fact, the Examiner finds that the claimed electric field
intensity covers “virtually any combination of wiring spacing and applied
potential,” but that the specification discloses only wiring line pitch above
15 µm. Id. 5-6.
Patent Owner argues that the claimed limitation is supported because
the specification “clearly sets forth various working examples at 15 µm,
20 µm, and 50 µm.” App. Br. 12. According to the Patent Owner, Wertheim
supports this position because “in In re Wertheim, the disclosure of two
specific embodiments at ‘36%’ and ‘50%’ were sufficient to show full
possession of the range ‘25-60%.’” Id. (citing Wertheim, 541 F.2d at 261-
62). Patent Owner’s interpretation of Wertheim is incorrect. The
specifications at issue in Wertheim disclose not only “specific embodiments
having solids contents of 36% and 50%,” but also that “coffee extract
initially produced by percolation of water through ground roasted coffee is
concentrated prior to foaming by suitable means ‘until a concentration of 25
to 60% solid matter is reached.’” Wertheim, 541 F.2d at 262. Based on these
disclosures, the Court in Wertheim held that claims reciting a solids content
range of “at least 35%” encompassed embodiments over 60%, outside the
disclosed range of 25-60%. Id. at 263. The Court held that “[b]y pointing to
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

5
the fact that claim 1 reads on embodiments outside the scope of the
description, the PTO has satisfied its burden” to show why “persons skilled
in the art would not recognize in the disclosure a description of the invention
of the claims.” Id. at 263-64.
The situation here mirrors that in Wertheim. The Examiner pointed
out that the claims at issue read on embodiments outside the scope of the
description and thus the Examiner satisfied the required burden to show why
the claims are not supported by an adequate written description. Patent
Owner argues that “there is no reason to infer that a 15 µm wire spacing
distance is intended to be the minimum wire spacing distance based on the
teachings of the ’205 patent.” Reply Br. 7 (emphasis in original). On the
contrary, the Examiner explains that the ’205 patent itself indicates that a
person of ordinary skill in the art “would recognize limits on the line spacing
due to the potential for migration.” Ans. 20 (citing ’205 patent, col. 2, ll. 16-
29). Patent Owner does not provide persuasive evidence of how the three
individual values of wiring line pitch provided in the specification supports
the limitation added to the claims at issue. See generally, App. Br. 11-13;
Reply Br. 5-8. Thus, as in Wertheim, Patent Owner did not carry its burden
of rebutting the Examiner’s showing that the claims are not supported by an
adequate written description.
The Prior Art Rejections
The Examiner rejects claims 53-57 and 62-66 under 35 U.S.C. § 103
as obvious over various combinations of Bergkessel, Yamaguchi, Ota,
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

6
Iwane, and Patent Owner’s statements about the prior art in the ’205 patent
specification. Ans. 6-19.
Patent Owner argues that a person of ordinary skill in the art would
not have combined Bergkessel and Yamaguchi because: (1) they are directed
to different arts; (2) they disclose different types of structures; and (3) the
objectives of the two references are not analogous. App. Br. 16-20; Reply Br.
10-11. We do not find these arguments persuasive.
We are not persuaded that Bergkessel and Yamaguchi are directed to
different arts such that a person of ordinary skill in the art would not have
combined them. Patent Owner argues that “Bergkessel is directed to the chip
on film (COF) arts, while Yamaguchi is directed to the tape carrier package
(TCP) arts.” App. Br. 17. The Examiner responds that both references are
drawn to carrier tape for semiconductor chips. Ans. 22. The Examiner adds
that Bergkessel is not limited to COF packages, but to making flexible
laminates, just like Yamaguchi.
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” Klein, 647 F.3d at
1348 (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Patent
Owner does not address the second prong of this test. See generally, App.
Br. 15-22; Reply Br. 10-11. Thus, even if we agreed with Patent Owner that
the two references are directed to different arts, which we do not, the
outcome would not be dispositive. Patent Owner’s argument compels the
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

7
conclusion that Bergkessel qualifies as analogous prior art to Yamaguchi
and the Examiner appropriately considered these two references together in
an obviousness analysis.
Patent Owner also argues that the two references are directed to
different technologies and disclose different types of structures. App. Br. 17;
Reply Br. 10. According to Patent Owner, Bergkessel discloses that the
invention is directed to an “adhesiveless flexible laminate” and “clearly
teaches that adhesive-based flexible laminates have disadvantages.” App. Br.
17 (emphases in original). Because Yamaguchi discloses an embodiment
with several adhesive layers and does not disclose a barrier metal layer,
Patent Owner argues that a person of ordinary skill would not use the
teachings of Yamaguchi “to improve the COF approach of Bergkessel.”
App. Br. 18.
To the extent that Patent Owner argues that Bergkessel teaches away
from Yamaguchi, we are not persuaded. The Examiner cited Yamaguchi for
the limited purpose of teaching (1) the wiring line spacing known in the art,
and (2) migration tests are run to determine reliability. Ans. 23. Appellants
do not explain why Yamaguchi would discourage a person of ordinary skill
in the art at the time of the invention from combining those limited teachings
with the structure disclosed in Bergkessel.
Further, the relevant obviousness inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of the references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does
not involve an ability to combine their specific structures.” In re Nievelt, 482
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

8
F.2d 965, 968 (CCPA 1973). And, the fact that the two references have
different objectives does not mean that a person of ordinary skill in the art
would not combine their teachings. In re Heck, 699 F.2d 1331, 1333 (Fed.
Cir. 1983) (“The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which
they are concerned.”) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA
1968)).
Patent Owner does not argue that combining the general teachings of
Yamaguchi with the system of Bergkessel would be “uniquely challenging
or difficult for one of ordinary skill in the art” at the time of the invention.
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). We
therefore conclude that the Examiner’s determination that one of skill in the
art would have been motivated to combine Bergkessel and Yamaguchi is
reasonable.
Patent Owner provides substantially the same arguments as described
above based on the combination of Bergkessel and Yamaguchi for the
remaining obviousness rejections, adding only that the added references
(Ota, Iwane, and statements with the ’205 patent itself) “fail to remedy the
deficiencies of Bergkessel and Yamaguchi.” App. Br. 21-24; Reply Br. 11-
14.
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

9
The Indefiniteness Rejection
The Examiner rejects claims 53-57 and 62-66 under 35 U.S.C. § 112,
¶ 2, as indefinite. Ans. 6. Because we affirm the written description and prior
art rejections on these claims, we do not reach this issue.
DECISION
The Examiner’s decision rejecting claims 53-57 and 62-66 under
35 U.S.C. § 112, ¶ 1, as failing to comply with the written description
requirement is affirmed.
The Examiner’s decision rejecting claims 53-55 under 35 U.S.C.
§ 103(a) as obvious over Bergkessel and Yamaguchi is affirmed.
The Examiner’s decision rejecting claim 56 under 35 U.S.C. § 103(a)
as obvious over Bergkessel, Yamaguchi, and Ota is affirmed.
The Examiner’s decision rejecting claim 57 under 35 U.S.C. § 103(a)
as obvious over Bergkessel, Yamaguchi, and Iwane is affirmed.
The Examiner’s decision rejecting claims 62-64 under 35 U.S.C.
§ 103(a) as obvious over Bergkessel, Yamaguchi, and Admitted Prior Art is
affirmed.
The Examiner’s decision rejecting claim 65 under 35 U.S.C. § 103(a)
as obvious over Bergkessel, Yamaguchi, Admitted Prior Art, and Ota is
affirmed.
The Examiner’s decision rejecting claim 66 under 35 U.S.C. § 103(a)
as obvious over Bergkessel, Yamaguchi, Admitted Prior Art, and Iwane is
affirmed.

AFFIRMED
Appeal 2012-012255
Reexamination Control 90/009,863
U.S. Patent 7,164,205

10

PATENT OWNER:
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195

cu