Ex Parte Bonvalot

Patent Trial and Appeal BoardNov 19, 2012

10485693 (P.T.A.B. Nov. 19, 2012)

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. 10/485,693 09/22/2004 Beatrice Bonvalot 526801-43PUS 4413 27799 7590 11/19/2012 Cozen O'Connor 277 Park Avenue, 20th floor NEW YORK, NY 10172 EXAMINER TRINH, MINH N ART UNIT PAPER NUMBER 3729 MAIL DATE DELIVERY MODE 11/19/2012 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 BEATRICE BONVALOT ____________________ Appeal 2010-005572 Application 10/485,693 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, THOMAS L. GIANNETTI, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005572 Application 10/485,693 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-3 and 8-10 under 35 U.S.C. § 103(a) as unpatentable over Booth (US 5,747,101, iss. May 5, 1998) and Zhao (US 5,674,787, iss. Oct. 7, 1997). We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below with added emphasis, is illustrative of the claimed subject matter. 1. A method of manufacturing an electrical device that is electrically and mechanically connectable to another electrical device, the electrical device having a face equipped with contact pads, the method comprises the steps of: applying an adhesive layer on the face equipped with contact pads, the adhesive layer being composed of a substance with adhesive properties; creating a plurality of openings through the adhesive layer over each contact pad; and growing, electrolessly or electrochemically, small metal sticks in the areas where the openings have been created to form a plurality of conductive paths over each contact pad, the volume of the conductive paths being defined by the openings. SUMMARY OF DECISION We REVERSE and enter a NEW GROUND of REJECTION. OPINION The Examiner’s Rejection Sole independent claim 1 is directed to manufacturing an electrical device having contact pads covered by an adhesive layer, with a step of creating a plurality of openings through the adhesive layer over each contact pad. In a subsequent step, conductive metal sticks are grown in those openings. Appeal 2010-005572 Application 10/485,693 3 The Examiner found that Booth describes a method of manufacturing an electrical device having openings 3 through an adhesive layer 2 over a contact pad 8. Ans. 3 (citing Booth, figs. 1-3). The Examiner found that Booth is silent regarding the metal sticks, but that Zhao discloses “growing … metal sticks in the areas where the openings 15 have been created to form a plurality of conductive paths 23, over each contact pad 11.” Ans. 3 (citing Zhao, figs. 5-6, col. 3, ll. 10-29, col. 8, ll. 50-67). Appellant correctly points out that both Booth and Zhao only describe a single opening over each contact pad. See App. Br. 5-7; Reply Br. 2. Accordingly, the issue raised in this appeal is one of claim construction. The Examiner’s position, although not specifically articulated, is that “over each contact pad” modifies “the adhesive layer.” In other words, the Examiner’s position is that the claims require multiple openings through the adhesive layer that is over the contact pads. Appellant’s position is that “over each contact pad” modifies the “plurality of openings,” such that the claims require multiple openings, through the adhesive layer, over each contact pad. The plain language of the claims supports Appellant’s position. The “growing … metal sticks” step that follows the “creating … openings” step calls for growing metal sticks in the openings “to form a plurality of conductive paths over each contact pad.” This, rather unambiguously, requires multiple openings over each contact pad. The Examiner’s rejection of claim 1 is therefore in error for this reason. The Examiner’s rejection of claims 2, 3, and 8-10 is based on the rejection of claim 1 and thus contains the same error. Accordingly, we do not sustain the Examiner’s rejection of claims 1-3 and 8-10. Appeal 2010-005572 Application 10/485,693 4 New Ground of Rejection Notwithstanding the above, the differences between the prior art cited by the Examiner and the subject matter of claim 1 are obvious. Booth describes a method of manufacturing an electrical device connectable to another electrical device (see, e.g., col. 1, ll. 11-15 “Direct Chip Attachment”) with the steps of applying an adhesive layer on a face having contact pads (see, e.g., col. 2, ll. 58-60), creating an opening over each contact pad (see, e.g., col. 2, ll. 60-62), and then forming conductive paths in the openings (see, e.g., col. 3, ll. 13-14). Booth does not describe a plurality of openings in the adhesive layer over each pad or that the conductive paths are metal. Zhao describes electrolessly growing metal sticks in openings over contact pads for the purpose of creating conductive paths between multiple layers of a semiconductor device. Zhao, col. 3, ll. 7- 13. It would have been obvious to a person of ordinary skill in the art at the time of invention to substitute the adhesive conductive paths of Booth for the metal conductive paths of Zhao because they are merely alternative ways to electrically connect electrical devices. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007) (a “patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.”) (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152-153 (1950)). Further, it would have been obvious to a person of ordinary skill in the art at the time of invention to substitute the single conductor per pad configuration of Booth/Zhao with a multiple conductor per pad Appeal 2010-005572 Application 10/485,693 5 configuration because using redundant electrical connections between two nodes is a known, predictable engineering expedient for reducing the problems inherent in electrical transmission. See KSR, 550 U.S. at 417 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”); Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“while an analysis of obviousness always depends on evidence … it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference”). A fundamental property of electrical transmission is that a single break at any point in a path prevents transmission. 1 It is therefore old and well known to provide redundant, parallel paths for the electricity to follow. See n. 1. With this knowledge, one of ordinary skill in the art would have considered it obvious to utilize redundant connectors per pad; this being the application of a known engineering technique to predictably solve a known problem. See also Zhao, col. 8, l. 66 to col. 9, ll. 11 (discussing concern over under growth of the metal conductors). In view of the above and pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 1 under 35 U.S.C. § 103(a) as unpatentable over Booth, Zhao, and the knowledge of someone of ordinary skill in the art at the time of the invention, as evidenced by Bracha. 1 See, e.g., Bracha (US 5,798,937, iss. Aug. 25, 1998), col. 1, ll. 43-45 (recognizing that a single failed via can render an entire circuit inoperable), col. 2, ll. 37-45 (proposing software to create redundant vias to overcome this problem). Appeal 2010-005572 Application 10/485,693 6 See Perfect Web, 587 F.3d at 1329; id. at 1328 (“it was proper for a patent examiner to rely on ‘common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”) (citing In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)). The Patent Trial and Appeal Board is a review body rather than a place of initial examination. Accordingly, we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable over Booth, Zhao, and/or other prior art. Although we do not reject every claim under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we merely leave those claims to the Examiner. See MPEP § 1213.02. DECISION We REVERSE the Examiner’s decision regarding claims 1-3 and 8- 10. We ENTER a NEW GROUND of REJECTION for claim 1 under 35 U.S.C. § 103(a). FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2010-005572 Application 10/485,693 7 the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… 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). REVERSED; 37 C.F.R. § 41.50(b) hh