Ex Parte Meyer

Patent Trial and Appeal Board

Nov 30, 2016

12130138 (P.T.A.B. Nov. 30, 2016)

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.
12/130,138 05/30/2008 Thorsten Meyer I560.204.101/2008P50209US 3388
25281 7590 12/02/2016
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
REAMES, MATTHEW L
ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
USPTO.PATENTS @dbclaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THORSTEN MEYER1
Appeal 2015-005245
Application 12/130,138
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellant identifies the real party in interest as Infineon Technologies AG
Appeal Br. 3.
2 In our opinion below, we reference the Final Office Action mailed July 9,
2014 (Final), the Appeal Brief filed November 17, 2014 (Appeal Br.), the
Examiner’s Answer mailed February 12, 2015 (Ans.), and the Reply Brief
filed April 13, 2015 (Reply Br.).
Appeal 2015-005245
Application 12/130,138
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) the Examiner’s decision
to reject claims 1—15 and 26—35. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to embodiments of a semiconductor device
(see, e.g., claims 1, 9, 26, 32) and a semiconductor device package (see, e.g.,
claim 7). Figure 1, reproduced below, illustrates one embodiment:
Figure 1 is a cross-sectional view of a semiconductor device 100a
Claim 1, with reference numerals inserted from Figure 1, is illustrative
of the embodiment of Figure 1. We highlight the language pertinent to the
issue on appeal:
1. A semiconductor device [100a] comprising:
a semiconductor chip [102];
at least one metal line [106] over a first side of the
semiconductor chip; and
2
Appeal 2015-005245
Application 12/130,138
a molded body [114a] consisting of a mold material, the
mold material directly contacting an entirety of at least a second
side of the semiconductor chip opposite the first side, and the
molded body comprising at least one recess [116].
Claims Appendix, Appeal Br. 16 (emphasis added).
Figure 2 illustrates another embodiment and is reproduced below:
Figure 2 is cross-sectional view of another embodiment
Claim 26, with reference numerals inserted from Figure 2, is
illustrative of another embodiment covered by some of the claims. Again,
we highlight the language pertinent to the issue on appeal:
26. A semiconductor device [100b] comprising:
a semiconductor chip [102];
at least one metal line [104] over a first side of the
semiconductor chip; and
a mold material [114b] defining at least two recesses
[120] extending only partially into the mold material, the mold
material directly contacting an entirety of a second side, a third
side, and a fourth side of the semiconductor chip, the second
3
Appeal 2015-005245
Application 12/130,138
side opposite the first side, and the third side and the fourth side
perpendicular to the first side.
Claims Appendix, Appeal Br. 18 (emphasis added).
The Examiner maintains the following rejections:
A. The rejection of claims 1—15, and 26—353 under 35 U.S.C. § 103(a) as
obvious4 over Rostoker5 in view of Ma6 and Mostafazadeh;7
B. The rejection of claims 10, 11, and 26—31 under 35 U.S.C. § 103(a) as
obvious over Rostoker in view of Kragl;8 and
C. The rejection of claim 30 under 35 U.S.C. § 103(a) as obvious over
Rostoker and Kragl, further in view of Sherrer.9
3 The Examiner’s statement of the rejection omits claims 27, and 32—35, but
the body of the rejection discusses claims 27, and 32—35. Final 2. Appellant
recognizes that claims 32—35 are rejected. Appeal Br. 7. Thus, the error as
to the listing of claims 32—35 was harmless. Although Appellant does not
list claim 27, Appellant did not argue any claim separately when addressing
this rejection, much less separately argue other claims that were rejected and
are of similar or narrower scope (e.g., claims 28—30). Thus, the omission of
claim 27 appears to be of little consequence. We will proceed to decide the
issues on appeal to avoid prolonging Appellant’s wait for a decision.
4 The Examiner states the rejection as under 35 U.S.C. § 102(b) as being
anticipated, but the body of the rejection provides an obviousness rationale.
Appellant notes that the rejection appears to be under 35 U.S.C. § 103(a) and
addresses it as such. Appeal Br. 7. Thus, the error was harmless.
5 Rostoker et al., US 5,311,060, issued May 10, 1994.
6 Ma et al., US 6,271,469 Bl, issued Aug. 7, 2001.
7 Mostafazadeh et al., US 5,705,851, issued Jan. 6, 1998.
8 Kragl, US 6,832,861 B2, issued Dec. 21, 2004.
9 Sherrer et al., US 2004/0264866 Al, published Dec. 30, 2004.
4
Appeal 2015-005245
Application 12/130,138
OPINION
Rejection A
When addressing the rejection of claims 1—15 and 26—35 under
35 U.S.C. § 103(a) as obvious over Rostoker in view of Ma and
Mostafazadeh, Appellant argues the claims as a group. Appeal Br. 7—10.
We select claim 1 as representative for deciding the issue on appeal.
The issue is: Has Appellant identified a reversible error in the
Examiner’s finding that the combination of Rostoker, Mostafazadeh, and Ma
would have suggested forming a molded body consisting of a mold material
“directly contacting an entirety of at least a second side of the semiconductor
chip opposite the first side” as recited in claim 1?
Appellant has not identified such an error.
Rostoker, Mostafazadeh, and Ma are directed to integrated circuit (IC)
packages that contain a semiconductor die and associated packaging that
contains the die. Rosketer, col. 1,11. 33—39; Mostafazadeh, col. 1,11. 5—7;
col. 3,11. 2-28; Ma, col. 2,11. 28-46.
All of the references encapsulate the semiconductor die in molding
material.
Rosketer encapsulates the die (die 452 in Fig. 4A) in epoxy molding
material (epoxy potting compound 494) after applying silicone gel
material 458 around leads 454 and over die 452. Rosketer, col. 9,11. 6—18.
Similarly to Rosketer, Mostafazadeh encapsulates die 34 (Fig. 2) and
leads 42 with a molding material 52, although Mostafazadeh does not use
silicone gel around the leads 42. Mostafazadeh, col. 3,11. 19-24. Ma
encapsulates die 102 with encapsulating material 112 as shown in Figure lb.
Ma, col. 3,11. 54—57. Ma, as found by the Examiner and not disputed by
5
Appeal 2015-005245
Application 12/130,138
Appellant, is directed to a flip chip configuration and does not use wire
bonds or leads for electrical connection. Compare Ans. 3 with Reply Br. 3;
Ma, Fig li (showing a first embodiment without a heat dissipation device);
Fig. 2d (showing a second embodiment with a heat dissipation device, such
as a heat slug 152, attached to die 102); Fig. 7e (showing an embodiment
with a plurality of dies 102, each with an associated heat slug 152).
Before the appeal, the Examiner’s position was that it would have
been obvious to one of ordinary skill in the art to omit the silicone gel in
Roskoter’s package as shown by Mostafazadeh. Final 3^4. After Appellant
argued that such a modification would not have resulted in direct contact of
the epoxy molding material 494 of Rostoker over “an entirety of’ the second
side because bond wires 454 would prevent contact at the location of the
bond wires (Appeal Br. 8), the Examiner responded that: (1) “an entirety”
can be less than “the entirety”; and (2) “[e]ven if the claim recited ‘the
entirety’ an obvious variant would be a flip chip configuration shown in Ma
which does not use wire bonds on the second side.” Ans. 3.
With regard to the use of “an entirety” in the claims, although this
language is less than ideal, we disagree with the Examiner that it somehow
opens the claims to structures where the molding material does not cover the
entire second surface.
“A claim must be read in accordance with the precepts of English
grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). “A”, “an”, and
“the” are articles that signal that a noun will follow and that any modifiers
6
Appeal 2015-005245
Application 12/130,138
between the article and the noun refer to that noun. Quick Access § 43.10
“A” and “an” are indefinite articles used to refer to nonspecific nouns.
Quick Access § 43a. The definite article “the” is used with a specific noun.
Id. “A noun is specific when a reader can understand from the context
exactly and specifically what the noun is referring to.” Id. For instance, a
noun is specific and requires “the” when the noun names something either
unique or commonly known. Quick Access, Quick Box 43.2, Rule 1. As an
example, one uses the definite article “the” in the following sentence” “The
sun has risen above the horizon,” because only one sun and only one horizon
exist; they are specific nouns. Id. See also Bose Corp. v. JBL, Inc., 274
F.3d 1354, 1359 (Fed. Cir. 2001) (quoting MPEP § 2173.05(e) (“Inherent
components of elements recited have antecedent basis in the recitation of the
components themselves.”).
As argued by Appellant, “entirety” means “the whole of something.”
Reply Br. 2; see also dictionary.com ((1) “the state of being entire;
completeness”; (2) “something that is entire; the whole”). Thus, like “the
sun” and “the horizon” there is only one “entirety” associated with a surface
such as a second surface. Thus, in accordance with proper English grammar,
Appellant should have recited “the entirety” in the claims. That being said
“entirety” refers to “the whole” whether it is preceded by “an” or “the”.
Thus, we agree with Appellant that the claim requires the whole surface of
the second side directly contact the molding material.
10 Lynn Quitman Troyka & Douglas Hesse, Quick Access Reference for
Writers 387—389 (5th ed. 2007). A copy of pages 387 to 389 accompany this
decision.
7
Appeal 2015-005245
Application 12/130,138
The Examiner’s claim interpretation, however, did not result in a
reversible error. As we stated above, the Examiner also responded that
“[e]ven if the claim recited ‘the entirety’ an obvious variant would be a flip
chip configuration shown in Ma which does not use wire bonds on the
second side.” Ans. 3. Appellant does not dispute that Ma teaches a flip chip
configuration without wire bonds, nor does Appellant dispute that using the
flip chip configuration to form a package with the heat sink receiving recess
of Rostoker would have been an obvious variant. Instead, Appellant
contends that Ma “fails to disclose a mold material comprising at least one
recess.” Reply Br. 3. Because the Examiner does not rely on Ma for a
teaching of the recess, but on Roskoter, Appellant fails to identify a
reversible error in the rejection based on the combination of Rostoker,
Mostafazadeh, and Ma.
Rejection B
The Examiner also rejects claims 10, 11, and 26—31 under 35 U.S.C.
§ 103(a) as obvious over Rostoker in view of Kragl. The dispositive issue
with regard to this rejection is: Has Appellant identified a reversible error in
the Examiner’s finding of a reason to combine the teachings of Rostoker and
Kragl in a way that results in the semiconductor device of claims 10 and 26?
Appellant has identified such an error.
Claim 10 depends from claim 9. Claim 9 is directed to a
semiconductor device including “a molded body consisting of a mold
material, the mold material directly contacting an entirety of a second side of
the semiconductor die opposite the first side and the mold material defining
at least one recess.” Claim 9 (emphasis added). Claim 10 requires the mold
material define “a plurality of recesses.” Claim 10.
8
Appeal 2015-005245
Application 12/130,138
Claim 26 is directed to a semiconductor device including mold
material defining at least two recesses extending only partially into the mold
material, the mold material directly contacting an entirety of a second side,
a third side, and a fourth side of the semiconductor chip, the second side
opposite the first side, and the third side and the fourth side perpendicular to
the first side.” Claim 26 (emphasis added).
Ro stoker is directed to a semiconductor package with heat sinks for
heat dissipation. Rostoker, col. 1,11. 17—20. The molding material is an
epoxy potting compound that encases the die 452, silicone gel 458, and bond
wires 454. Rostoker, Fig. 4A; col. 9,11. 14—18.
Kragl is directed to a structure for coupling a light emitting diode
(LED) and an optical waveguide. Kragl, col. 1,11. 44^47; col. 10,1. 63—col.
11,1. 8. A molding material is used to form coupling element 3 with a bore
that receives the optical waveguide 7. Kragl, Fig. 1A; col. 10,1. 63—col. 11,
1. 1. The bore can be above the LED 2 as shown in Figure 1A or to the side
as shown in Figure 11. The space between the end face of the optical
waveguide 7 and LED 2 is filled with transparent adhesive K. Kragl,
col. 11,11. 21—25. Kragl places a submount 1 under the LED 2 to dissipate
heat. Kragl, col. 12,11. 22—38.
The Examiner finds that “Kragi [sic] teaches a semiconductor device
with a mold body items 3 and K with a recess or [sic, for] accepting a [sic,
an] optical cable, the recess can be on the top (item 1 A) [sic, fig. 1 A] or have
multiple on the top [Qfigure 9a[)] and be formed on a side perpendicular to
the bottom [Qfigure 11).” Final 9. The Examiner concludes that “it would
have been obvious to one of ordinary skill in the art to integrate the recesses
9
Appeal 2015-005245
Application 12/130,138
of Kragi [sic] on the side perpendicular to the first with the device of
Rostocker.” Id.
Items 3 and K of Kragi are not “a molded body consisting of a mold
material” as required by claim 9, from which claim 10 depends, nor are
items 3 and K “a mold material” as required by claim 26. The use of the
phrase “consisting of’ in claim 9 limits the mold body to a single
composition. This single composition must be “directly contacting an
entirety of a second side of the semiconductor die opposite the first side.”
Claim 9. The use of the indefinite article “a” before “mold material”
followed by use of the definite article “the” to refer back to this “mold
material” in claim 26 means a single mold material must be “directly
contacting an entirety of a second side, a third side, and a fourth side” as
required by claim 26. The language of claims 9 and 26 precludes reading
the combination of coupling element 3 and adhesive K as being the mold
body of claim 9 or the mold material of claim 26. The Examiner has not
provided sufficient evidence to support a finding of a suggestion within the
prior art that would place a single mold material in direct contact with a
second side of the semiconductor chip opposite the first side as required by
claim 10, by virtue of its dependency on claim 9, and claim 26.
Rejection C
In the rejection of claim 30 under 35 U.S.C. § 103(a) as obvious over
Rostoker and Kragi, further in view of Sherrer, the Examiner does not rely
on Sherrer in a way that remedies the deficiency in the rejection over
Rostoker and Kragi discussed above.
10
Appeal 2015-005245
Application 12/130,138
CONCLUSION
We sustain the rejection of claims 1—15 and 26—35 under 35 U.S.C.
§ 103(a) as obvious over Rostoker in view of Ma and Mostafazadeh, but we
do not sustain the Examiner’s rejection of claims 10, 11, and 26—31 under
35 U.S.C. § 103 as obvious over Rostoker in view of Kragl, nor do we
sustain the rejection of claim 30 under 35 U.S.C. § 103(a) as obvious over
Rostoker and Kragl, further in view of Sherrer.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
11
Notice of References Cited
Application/Control No. Applicant(s)/Patent Under Patent
12/130,138
Appeal No. 2015-005245
Examiner Art Unit
Page 1 of 1
MATTHEW REAMES 2893
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U Lynn Quitman Troyka & Douglas Hesse, Quick Access Reference for Writers, 387-389 (Pearson Prentice Hall 5th Ed. 2007).
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How should I use articles with singular count nouns?
ALERTS:
(lj Many, most, and some require of the before a noun that is specific
but not before a noun that is a generalization.
Most supervisors are well qualified, [general]
Most of the supervisors here are well qualified, [specific]
(2) The phrases a few and a little convey the meaning “some”: I have
a few rare books means “I have some rare books.” They are worth
a little money means “They are worth some money.” Without the
word a, the meaning of few and little is “almost none”: I have few
[or very few] books means “I have almost no books.” They are worth
[very] little money means “They are worth almost no money.”
(3) A phrase with one of the always has a plural noun as the object of
the preposition of. The verb agrees with one, not with the plural
noun, so it is always singular: One of the most important inventions
of the twentieth century is [not are] television (39g). ♦
42c What forms are correct for nouns used as adjectives?
Some words that function as nouns can also function as adjectives.
In English, adjectives don’t have plural forms. If you use a noun as an
adjective, don’t add -s or -es to the adjective, even when the noun or
pronoun it modifies is plural.
Many Americans students are basketball fans.
My nephew likes to look at pictures books.
ARTICLES
The words a, an, and the are articles. Articles are one type of
determiner. They signal that a noun will follow and that any modifiers
between the article and the noun refer to that noun (see Quick Box 43.1
on p. 388).
a chair, the computer
43a How should I use articles with singular count nouns?
When you use a singular count noun (see Quick Box 43.2 on p. 389),
you need to use a determiner, as shown for Group 1 in Quick Box 42.2.
If you have to choose between a, an, and the, decide whether the noun
Articles388
SUMMARY QUICK BOX zm
Using articles: the, a, and an
COUNT NONCOUNT PROPER
NOUN NOUN NOUN
Singular Plural Singular Plural
SPECIFIC the* the the [See 43c.] the
GENERAL a, an — — — —
*See 43a and the four rules in Quick Box 43.2.
is specific or nonspecific. A noun is specific when a reader can under­
stand from the context exactly and specifically what the noun is refer­
ring to. Quick Box 43.2 can help you decide when a singular count noun
is specific and therefore requires the.
Jhr ALERTS: (1) One common exception affects rule 3 in Quick Box
43.2. A noun may still require a or an after the first use if one or more
descriptive adjectives come between the article and the noun: I bought
a sweater today. It was a [not the] red sweater.
(2) An is used before words that begin with a vowel sound; a is used be­
fore words that begin with a consonant sound. Sound, not spelling, is
the key. Words that begin with h or u can have either a vowel or a con­
sonant sound; check your dictionary. Choose a or an based on the sound
of the first word after the article, even if that word is not the noun.
1 an idea, a good idea
® an umbrella, a useless umbrella
4 an honor, a history book ♦
How should I use articles with singular count nouns?
43.2 —r■LUsing the with singular count nouns 1
RULE 1
A noun is specific and requires the when it names something either
unique or commonly known.
■ The sun has risen above the horizon. [Because only one sun and one
horizon exist, they are specific nouns.]
A noun is specific and requires the when it names something used in a
representative or abstract sense.
» Benjamin Franklin favored the turkey as the national bird of the
United States. [Because turkey and national bird are representative refer­
ences rather than references to a particular turkey or bird, they are specific
nouns in this context.]
A noun is specific and requires the when it names something that is de­
fined elsewhere in the same sentence or in an earlier sentence.
s The ship Savannah was the first steam vessel to cross the Atlantic
Ocean. [Savannah names a specific ship, and Atlantic Ocean identifies a
specific ocean.]
» The carpet in my bedroom is new. [In my bedroom defines exactly
which carpet is meant, so carpet is a specific noun in this context.]
i I have a computer and a fax machine in my office. The computer is
often broken. [Computer is introduced in the first sentence, so it uses a.
Computer has been made specific by the first sentence, so the second sen­
tence uses the to refer to the same noun.]
RULE 4
A noun is specific and requires the when it represents something that
can be inferred from the context.
* I need an expert to fix the problem. [If you read this sentence after the
example about a computer in Rule 3, you understand that problem refers to
the broken computer, and so problem is specific in this context. Here the
word the is similar to the word this.]
RULE 2
RULE 3