Ex Parte Lee et al

Patent Trial and Appeal BoardNov 30, 2012

11274489 (P.T.A.B. Nov. 30, 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. 11/274,489 11/14/2005 Seongmin Lee 27-105 4836 22898 7590 12/03/2012 ISHIMARU & ASSOCIATES LLP 2055 GATEWAY PLACE SUITE 700 SAN JOSE, CA 95110 EXAMINER WAGNER, JENNY L ART UNIT PAPER NUMBER 2891 MAIL DATE DELIVERY MODE 12/03/2012 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 SEONGMIN LEE, HANGCHEOL CHOI and IN-SANG YOON ____________ Appeal 2010-009270 Application 11/274,489 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009270 Application 11/274,489 2 STATEMENT OF THE CASE Appellants are appealing claims 1-18. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention relates to an encapsulated semiconductor packaging having a center pad die. See generally Specification 1-3. Illustrative Claim 1. A center pad die and substrate assembly wherein the substrate is provided at a die mounting location with a slot, the slot being long enough to extend beyond the attached die, the substrate is provided with a margin slot adjacent and parallel to the slot. Rejection on Appeal Claims 1-18 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Tao (U.S. Patent Number 6,300,166 B1; issued October 9, 2001), Terada (U.S. Patent Number 5,874,773; issued February 23, 1999) and Robinson (U.S. Patent Number 4,952,999; issued August 28, 1990). Answer 3-12. Issue on Appeal Are claims 1-18 improperly rejected under 35 U.S.C. §103(a) as being unpatentable over the combination of Tao, Terada and Robinson? Appeal 2010-009270 Application 11/274,489 3 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief. However, we highlight and address specific findings and arguments for emphasis as follows. Appellants argue claims 4, 5 and 12 in conjunction with claim 1 and thus fail to indicate how each of the noted claims (4, 5 and 12) distinguishes over the cited prior art. See Appeal Brief 11. Therefore we address the merits of the Examiner’s rejection of claim 1. Appellants argue that the combination of Tao, Terada and Robinson fails to teach a semiconductor die pad or “substrate” having “a margin slot adjacent and parallel to the slot” as recited in claim 1. Id. However, the Examiner finds that the cited combination discloses a semiconductor device having a die pad or substrate incorporating slots. Answer 3-12. Therefore we do not find Appellants’ arguments to be persuasive because, as the Examiner finds, having a semiconductor die pad or substrate that incorporates slots is notoriously well known in the art. KSR Int’l Co. v. Teleflex Inc. reaffirmed principles based on its precedent: The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. . . . . . . . . . . If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one Appeal 2010-009270 Application 11/274,489 4 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. Sakraida [v. AG Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock [, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. 550 U.S. 398, 416, 417 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)). Appellants further argue that the combination of references cited by the Examiner fails to address the purpose for the claimed invention as explained in Appellants’ Specification. Appeal Brief 11. Appellants highlight two phrases from the Specification: “molding of features on both sides of the substrate can be accomplished in a single molding step” (paragraph [0009]) and mold cavities configured and dimensioned “to accommodate wire bonds passing through the slot in the substrate” (paragraph [0010]). Appeal Brief 11-12. We do not find the Appellants’ arguments to be persuasive because the arguments are not commensurate with the scope of the invention recited in claim 1. The invention consists of a semiconductor die pad or substrate that incorporates slots configured in the die pad or substrate. See Claim 1. The use of slots within a substrate is well known in the art as evident by the Examiner’s cited references. See Answer 3-12. The mere manipulation of the location of the slots within the die pad or substrate does not distinguish the claimed invention over the cited art because Appellants bear the burden of showing unexpected results. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To establish Appeal 2010-009270 Application 11/274,489 5 unexpected results, the claimed subject matter must be compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). A showing of “unexpected results” requires that “the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” Soni, 54 F.3d at 750. Therefore we sustain the Examiner’s rejection of claims 1-18 for the reasons stated above. DECISION The rejection of claims 1-18 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED peb