Ex Parte Owens

Patent Trial and Appeal Board

May 31, 2017

12131691 (P.T.A.B. May. 31, 2017)

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.
12/131,691 06/02/2008 NORMAN LEE OWENS SC09069T C04 6322
23125 7590 06/02/2017
NXP USA, Inc.
LAW DEPARTMENT
6501 William Cannon Drive West TX30/OE62
AUSTIN, TX 78735
EXAMINER
CARLEY, JEFFREY T.
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
ip. department .u s @ nxp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORMAN LEE OWENS
Appeal 2015-005777
Application 12/131,691
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Norman Lee Owens (Appellant)1 appeals under 35 U.S.C. § 134 from
the Examiner’s August 18, 2014 non-final decision (“Non-Final Act.”)
rejecting claims 21—25, 27—37, 44, and 47-49.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is Freescale
Semiconductor, Inc. Appeal Br. 1 (filed Nov. 17, 2014).
2 Claims 1—20, 26, 38-43, 45, and 46 are canceled. Amendment 4—6 (filed
Mar. 31,2010).
Appeal 2015-005777
Application 12/131,691
SUMMARY OF THE DECISION
We AFFIRM.
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to “ball-grid array semiconductor
packaging.” Spec. 1:15—16.3 Claim 21 is the sole independent claim on
appeal, and is reproduced below from page 10 (Claims Appendix) of the
Appeal Brief:
21. A method for assembling packages, comprising the steps
of:
providing a plurality of substrates arranged in an N by M
array within a printed circuit board having a rigidity, wherein N
and M are greater than or equal to 2, each of the plurality of
substrates having a plurality of bond posts and a plurality of
contact pads, wherein the rigidity of the printed circuit board is
such that the printed circuit board is not too flimsy to be
subjected to automated assembly processes;
attaching a semiconductor die to each of the plurality of
substrates, the semiconductor die having at least one bond pad;
encapsulating the semiconductor die with an encapsulant;
curing the encapsulant; and
dividing the N by M array into separate packages,
wherein the providing comprises providing the plurality
of substrates such that each of the plurality of substrates
maintains a planarity variation less than approximately 0.15
mm across each of the plurality of substrates after the dividing.
3 References herein to the Specification are to the Substitute Specification
filed on August 12, 2008.
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REJECTIONS
Claims 21—23, 25, 27, 44, 47, and 48 stand rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1—3, 5, and
7 of Owens (US 6,465,743 Bl, iss. Oct. 15, 2002).
Claims 21, 23, 24, 30-32, 44, and 47-49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Freyman (US 5,635,671, iss.
June 3, 1997), Kimata (JP 61-222151, pub. Oct. 2, 1986), and Appellant’s
Admitted Prior Art (“AAPA”).
Claims 22 and 33—37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman, Kimata, AAPA, and Heckman (US 5,467,253,
iss. Nov. 14, 1995).
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman, Kimata, AAPA, and Kamigaki (US 4,808,990,
iss. Feb. 28, 1989).
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman, Kimata, AAPA, and Shimizu (US 4,920,074,
iss. Apr. 24, 1990).
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freyman, Kimata, AAPA, and Degani (US 5,346,118, iss.
Sept. 13, 1994).
ANALYSIS
Double Patenting
The Examiner determines that claims 21—23, 25, 27, 44, 47, and 48
are not patentably distinct from claims 1—3, 5, and 7 of Owens because “all
of the limitations of said claims in the instant application are disclosed by
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the cited claims of the prior US Patent.” Non-Final Act. 3^4. The Examiner
notes that this rejection can be overcome by filing a terminal disclaimer. Id.
at 3.
Appellant does not contest this rejection. See Appeal Br. 4—9; see
also Reply Br. 1. However, we note that Appellant filed a terminal
disclaimer (see Terminal Disclaimer (filed May 17, 2015)) regarding Owens
at the time the Reply Brief was filed, and the terminal disclaimer appears to
have been approved (see Terminal Disclaimer Review Decision (entered
Oct. 7, 2015)).
Accordingly, we do not reach the merits of this rejection, and leave
initial consideration of whether the Terminal Disclaimer overcomes the
rejection to the Examiner during any further prosecution of this application.
Obviousness Based on Freyman, Kimata, and AAPA
The Examiner finds that Freyman discloses the method of
independent claim 21 substantially as claimed. Non-Final Act. 4—5.
Although the Examiner finds that Freyman Fig. 7A “shows an array in
which both N and M are equal to or greater than 2” (id. at 7), the Examiner
finds that Freyman “does not explicitly disclose that the array of N by M are
both greater than or equal 2” (id. at 5) or that it is “disposed within a [printed
circuit board]” (id. at 6). The Examiner further finds that Freyman does not
disclose “that the plurality of substrates maintains a planarity variation less
than approximately 0.15 mm across each of the plurality of substrates after
the dividing.” Id. at 5.
The Examiner finds that Kimata teaches a printed circuit board
“provided with a plurality of substrates, arranged in an N by M array with N
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and M greater than or equal [to] 2,” and reasons that it would have been
obvious to one of ordinary skill in the art “to use the N by M array of Kimata
to employ the [sic] with the packages of Freyman as the two inventions are
in the same field of endeavor . . . and are for solving the same problem.” Id.
Continuing, the Examiner notes that “Kimata simply serves to demonstrate
that the substrates being arranged in an array of N by M (being each greater
than or equal to 2) would achieve an increased manufacturing speed and
efficiency resulting in reduced costs.” Id. at 5—6.
The Examiner further finds that “AAPA teaches that a plurality of
substrates which maintains a planarity variation less than approximately 0.15
mm across each of the plurality of substrates after the dividing is old and
well known” and that the recited planarity “is an industry standard for ball-
grid array (BGA) manufacture.” Id. at 6. The Examiner reasons that “it
would naturally be expected that the cited BGA method of Freyman would
exhibit the same planarity as detailed in the instant claim.” Id.
Appellant traverses, arguing that a skilled artisan “would not modify
Freyman by the teachings of Kimata to provide substrates arranged in an N
by M array within a printed circuit board wherein N and M are greater than
or equal to 2, as set forth in claim 21.” Appeal Br. 4. Appellant notes that
Freyman teaches a degating process wherein the substrate is tilted to remove
excess encapsulant {id. at 4—7), and argues that:
One of skill in the art would not use a circuit board with
more than one “row” of substrates (an array where N and M are
greater than or equal to 2) in the [degating] process of Freyman
[because] the inclusion of the additional row of substrates
would not allow for excess encapsulant to be removed from the
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packaged encapsulant at a desired location for packages in both
rows by the process set forth in Freyman.
Id. at 7. Appellant presents a hypothetical variation of Freyman’s Figure 8B,
captioned “Figure 8B',’’ purporting to show that with an additional row of
substrates, “tilting the two rows of substrates at the angle shown in Figure
8B would not guarantee that all of the excess encapsulant... for the
package encapsulants ... of the additional row would be removed at the
edge ... of the package encapsulants ... of the additional row.” Id. at 8.
Continuing, Appellant contends that tilting would only cause excess
encapsulant to be severed at the row of substrates immediately adjacent the
tilting axis, leaving “excess encapsulant. . . [that] would undesirably remain
attached to the package encapsulant” for packages of the additional row. Id.
at 8—9. Thus, Appellant contends, the Examiner’s modification of Freyman
would render Freyman unsatisfactory for its intended purpose of removing
excess encapsulant by degating. Id. at 9.
Appellant’s arguments presume that the additional row of substrates
would necessarily use the same encapsulant source (encapsulant 805c within
mold pot 703a) as the first row of substrates. Appellant has not set forth any
evidence or persuasive technical reasoning to support this presumption. To
the contrary, Freyman acknowledges that “the mold . . . can include a
plurality of pots, each pot having one or more runners extending to one or
more cavities.” Freyman 2:22—24. Thus, one of ordinary skill, when
considering the teachings of Freyman as a whole, would recognize that an
additional mold pot could be added to supply encapsulant to the additional
row of substrates, and that such additional mold pot could be added
outwardly (i.e., to the right in Appellant’s Figure 8B') of the additional row
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of substrates. One of skill in the art would further recognize that the excess
encapsulant could be removed from the additional row of substrates in the
same manner as with the original row of substrates by an additional “tilting”
maneuver.
Appellant’s arguments are also unpersuasive because they presume
that only one tilting maneuver is possible. To the contrary, even if one were
to use only one encapsulant pot to supply both rows of substrates as
Appellant suggests, the skilled artisan, being of ordinary creativity (KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)), would not simply leave
the additional excess encapsulant in place, but would add additional degating
regions and perform additional degating tilt maneuvers as needed to remove
all excess encapsulant as taught by Freyman.
Appellant also argues that because “Freyman describes the formation
of a packaged electronic device using a conventional two-piece mold” and
“Kimata does not use a conventional two-piece mold,” “one of ordinary skill
would not modify the teachings of Freyman according to the teachings of
Kimata.” Appeal Br. 9.
Appellant’s argument is presented in conclusory fashion with no
supporting evidence or persuasive technical reasoning, and thus fails to
apprise us of error in the Examiner’s findings or reasoning.
Appellant presents an additional argument in the Reply Brief—
namely, that “Figure 7A of [Freyman] is actually a plan view of a two piece
automatic mold 700 with two 1X4 strips 701 of substrates positioned
between an upper mold section 702 and a lower mold section 703.” Reply
Br. 2 (emphasis omitted). Appellant purports that this argument is presented
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in response to the Examiner’s interpretation, presented in the Examiner’s
Answer, that Freyman Figure 7A shows an array of substrates. Id.
(referencing Ans. 6).
We note that the Examiner made a similar finding in the Final Action.
See Final Act. 6 (“Freyman does disclose an N by M array of substrates in
[F]ig. 7A”), 7 (“the teaching of Freyman as shown in [F]ig. 7A, also clearly
shows an array in which both N and M are equal to or greater than 2”).
Thus, Appellant’s argument, first presented in the Reply Brief, is untimely.
37 C.F.R. §41.41(b)(2).
Nonetheless, we consider Appellant’s new argument and find it
unpersuasive, as it does not address the Examiner’s findings regarding
Kimata or reasoning regarding the combination of the Freyman and Kimata
teachings.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 21 as being unpatentable over Freyman, Kimata, and
AAPA. Appellant does not separately address the rejection of dependent
claims 23, 24, 30-32, 44, and 47^49. See Appeal Br. 9. Accordingly, for
the same reasons as discussed above, we sustain the rejection of these claims
as being unpatentable over Freyman, Kimata, and AAPA.
Obviousness Based on Freyman, Kimata, AAPA, and one of Heckman,
Kamigaki, Shimizu, and Degani
Appellant does not separately address the obviousness rejections of
claims 22, 25, 27—29, and 33—37, each of which depends from claim 21. See
Appeal Br. 9. Accordingly, for the same reasons as discussed above, we
sustain the obviousness rejections of these claims.
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DECISION
We do not reach the Examiner’s decision to reject claims 21—23, 25,
27, 44, 47, and 48 on the ground of nonstatutory double patenting over
claims 1—3, 5, and 7 of Owens.
The Examiner’s decision to reject claims 21—25, 27—37, 44, and 47—
49 under 35 U.S.C. § 103(a) is 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)(l)(iv).
AFFIRMED
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