Ex Parte Searls et al

Patent Trial and Appeal Board

Dec 21, 2012

11588682 (P.T.A.B. Dec. 21, 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.
11/588,682 10/27/2006 Damion Searls ITL.1144D1 (P19226D) 3738
21906 7590 12/24/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
DINH, TUAN T
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
12/24/2012 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 DAMION SEARLS and EDWARD OSBURN
___________________

Appeal 2010-008789
Application 11/588,682
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims
1-8, all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
Appellants’ Disclosed Invention
Appellants disclose a method for reducing loadline impedance in a voltage
regulator in an Integrated Circuit (IC) environment (Title; Spec. 2:6-3:6) by the
placement of voltage regulator devices (e.g., output filters, inductors, capacitors,
etc.) under a semiconductor IC device (Spec. 13; Abs; Figs. 1 and 2).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases added:
1. A method comprising:

mounting a semiconductor device to a first side of a circuit board;

mounting at least one voltage regulator device to a second side of the
circuit board, the second side opposite to the first side; and

mounting at least one capacitor on said second side, underneath said
semiconductor device but outside of a pin field of said semiconductor device.

The Examiner’s Rejections
(1) The Examiner rejected claim 1 as being unpatentable under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellants regard as the
invention. Ans. 3. The Examiner determines (Ans. 3-4 and 7) that the last line of
claim 1 is unclear because Appellants’ Figures 1 and 2 show a capacitor 41
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mounted on a circuit board 20 and spaced apart from semiconductor device 30, i.e.,
outside the pin field of semiconductor device 30 but underneath IC package 35 of
semiconductor device 30. Therefore, the Examiner determines that capacitor 41 is
not “underneath said semiconductor device but outside of a pin field,” as recited in
the last line of claim 1.
(2) The Examiner rejected claims 1-4, 6, and 7 under 35 U.S.C. § 102(e) as
being anticipated by Smith (U.S. Patent No. 6,760,232 B2). Ans. 3-5.
(3) The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Smith in view of Takeuchi (U.S. Patent No. 6,384,476 B2).
Ans. 5-6.
(4) The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Smith in view of Official Notice (that LC
filters are used for noise reduction, and signal conditioning and bandpass filters are
well known for use with semiconductor devices). Ans. 6.
Appellants’ Contentions
(1) Appellants contend (App. Br. 10; Reply Br. 1) that the Examiner erred in
rejected claim 1 as being unpatentable under 35 U.S.C. § 112, second paragraph,
because capacitor 41 is outside of the pin field shown in Appellants’ Figure 2, but
is underneath the semiconductor device 30 in the form of the packaged integrated
circuit 35. Therefore, Appellants assert that claim 1 is not indefinite and claim 1
describes what is shown in (i) Figure 1 (where capacitor 41 is shown underneath
the semiconductor device 30 and package 35), and (ii) Figure 2 (where capacitor
41 is outside of the pin field 30).
(2) Appellants contend (App. Br. 10; Reply Br. 1-2) that the Examiner erred
in rejecting claims 1-4, 6, and 7 under 35 U.S.C. § 102(e) as being anticipated by
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Smith for numerous reasons, including:1
(a) claim 1 is supported by the Specification (App. Br. 10);
(b) no voltage regulator is shown in Figure 3, just a power laminate,
and there is no suggestion in Smith that the power laminate 20 is the voltage
regulator (Reply Br. 1-2); and
(c) the voltage regulator 1000 shown in Figure 2 of Smith is placed on
the same side of the printed circuit board as the integrated circuit, and is
placed on the laminate (Reply Br. 2).
(3) Appellants contend (App. Br. 10) that the Examiner erred in rejecting
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Smith and Takeuchi for the same reasons as provided for claim 1.
(4) Appellants contend (App. Br. 10) that the Examiner erred in rejecting
claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Smith in view of
Official Notice for the same reasons as provided for claim 1.

Issues on Appeal
(1) Did the Examiner err in rejecting claim 1 under § 112, second paragraph,
based on determining that the limitation “underneath said semiconductor device
but outside of a pin field of said semiconductor device” (claim 1) is indefinite for

1 For this rejection, Appellants do not present arguments on the merits with regards
to a specific claim, and merely present general arguments that apply to all of the
claims rejected under § 102 (independent claim 1 and dependent claims 2-4, 6, and
7 (see App. Br. 10; Reply Br. 1-2). Appellants argue that claims 5 and 8
(dependent from claim 1) stand or fall for the same reasons as claim 1, respectively
(see App. Br. 10), which are not considered arguments for separate patentability.
Thus, we select claim 1 as representative of the group of claims 1-4, 6, and 7. 37
C.F.R. § 41.37(c)(1)(iv).
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failing to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention?
(2) Did the Examiner err in rejecting claims 1-4, 6, and 7 under
§ 102(e), and claims 5 and 8 under § 103(a), because Smith fails to disclose (i)
mounting a semiconductor device on a first side of a circuit board, (ii) “mounting
at least one voltage regulator device” on the second and opposite side of the circuit
board, and (iii) “mounting at least one capacitor on said second side, underneath
said semiconductor device but outside of a pin field of said semiconductor device,”
as recited in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 10) and the Reply Brief (Reply Br. 1-2)
that the Examiner has erred. We agree with Appellants’ first contention listed
above as to the rejection under § 112, second paragraph, and we disagree with
Appellants’ second, third, and fourth contentions listed above as to the anticipation
and obviousness rejections.
Indefiniteness Rejection of Claim 1
With regard to the rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, we agree with Appellants that one of ordinary skill in the art would be
able to ascertain from Figure 2 that capacitor 41 can be mounted underneath the
semiconductor device including package 35, and yet still be outside of a pin field
30 of the semiconductor device and package 35. This is what is shown in Figure 2.
The limitation found in the last line of claim 1 does not render the scope of
independent claim 1 and its dependent claims unascertainable. Claim 1
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particularly points out and distinctly claims the subject matter which Appellants
regard as the invention. See 35 U.S.C.
§ 112, second paragraph. Furthermore, “those skilled in the art would understand
what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir.
1986) (citations omitted). Accordingly, we will not sustain the Examiner’s
indefiniteness rejection of claim 1 under § 112, second paragraph.
Anticipation and Obviousness Rejections of Claims 1-8
We disagree with Appellants’ conclusions regarding the anticipation and
obviousness rejections of claims 1-8. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 3-9). We highlight and amplify certain teachings
and suggestions of Smith as follows.
At the outset, we note that claim 1 recites a “voltage regulator device,” and
not a power regulator or voltage regulator as argued by Appellants (Reply Br. 1-2).
Appellants’ originally filed claim 6 describes “voltage regulator device” as
including capacitors (claim 6). Appellants’ Abstract describes that “voltage
regulator device may be output filters, inductors, capacitors, and the like” (Spec.
13:6-7; Abs.). And Appellants describe voltage regulator components as including
output inductors, bulk capacitors, Metal Oxide Silicon Field Effect Transistors
(MOSFETs), and driver ICs (Spec. 2:15-16 and 4:4-5). Smith discloses that power
laminate 20 (see Figs. 3 and 7) may include a voltage regulator circuit and voltage
regulator devices such as decoupling capacitors (Abs.). Therefore, Smith discloses
a “voltage regulator device” (see power laminate 20 in Figs. 3 and 7 which may
include a voltage regulator circuit such as voltage regulator 1000 shown in Fig. 7)
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and capacitor 40 (Fig. 3) that are mounted (i) under a semiconductor device 5 on a
second side of a circuit board 15 opposite from a first side of the circuit board 15
where a semiconductor device and integrated circuit 5 is mounted, but (ii) outside
of a pin field (where solder balls 25 are located in Fig. 7) of the semiconductor
device 5. Smith, col. 5, ll. 40-49; col. 7, ll. 31-40.
Appellants’ contentions (Reply Br. 1-2) that no voltage regulator is shown in
Smith’s Figure 3 (just a power laminate), and there is no suggestion in Smith that
the power laminate 20 is the voltage regulator, are unpersuasive in light of Smith’s
disclosure regarding Figure 3 that “power laminate 20 may also include a voltage
regulator circuit, such as voltage regulator 1000 shown in FIG. 2” (col. 5, ll. 46-
49). Smith’s Figure 7 shows a power distribution system including a voltage
regulator 1000 (e.g., output inductor or voltage regulator) placed on the opposite
side of the printed circuit board 15 from a semiconductor device and integrated
circuit 5, and placed on the power laminate 20 side.
We agree with the Examiner (Ans. 4-5 and 8-9) that Smith’s Figure 3 and
Figure 7 (and accompanying description) meet all of the limitations of the method
of mounting devices as recited in claims 1-4, 6, and 7. We also agree with the
Examiner (Ans. 8) that Appellants have not shown how Smith fails to meet the
claims, including the step of “mounting at least one capacitor on said second side,
underneath said semiconductor device but outside of a pin field of said
semiconductor device,” as set forth in representative claim 1.
Appellants’ argument that the voltage regulator is shown in Smith Figure 2
as being on the same side as the “integrated circuit,” as claimed (Reply Br. 2), is
not persuasive because: (1) claim 1 requires a voltage regulator device, not
necessarily a voltage regulator itself; (2) Smith’s Abstract discloses the power
laminate includes a voltage regulator; (3) Appellants admit that Smith discloses a
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voltage regulator (namely Fig. 2, element 1000), albeit true that Smith Figure 2
shows the voltage regulator on the same side as the “integrated circuit;” (4) Smith
Figure 7 (cited by the Examiner, see Ans. 4) shows the voltage regulator 1000 of a
power laminate 20 which is mounted on the opposite side of the circuit board 15
from the semiconductor device 5 (see Fig. 7, voltage regulator 1000 of the power
laminate 20 mounted on the second side of circuit board 15; compare Fig. 1 with
Fig. 7). Figures 3 and 7 of Smith, along with their accompanying description, each
meet the limitations recited in claim 1.
For the above reasons, we will sustain the anticipation rejection of
representative claim 1, and claims 2-4, 6, and 7 depending therefrom.
Additionally, we will sustain the obviousness rejections of claims 5 and 8 for the
same reasons as claim 1 just discussed.

CONCLUSIONS
(1) The Examiner has erred in rejecting claim 1 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for lack of antecedent basis.
(2) The Examiner did not err in rejecting claims 1-4, 6, and 7 under 35
U.S.C. § 102(e) as being anticipated by Smith because Smith discloses (i)
mounting a semiconductor device on a first side of a circuit board, (ii) “mounting
at least one voltage regulator device” on the second and opposite side of the circuit
board, and (iii) “mounting at least one capacitor on said second side, underneath
said semiconductor device but outside of a pin field of said semiconductor device,”
as recited in representative claim 1.
(3) The Examiner did not err in rejecting claim 5 under 35 U.S.C. § 103(a)
as being unpatentable over Smith in view of Takeuchi because the limitations of
claim 1 are met, and Appellants have not presented as to the merits of claim 5.
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(4) The Examiner did not err in rejecting claim 8 under 35 U.S.C. § 103(a)
as being unpatentable over Smith in view of Official Notice because the limitations
of claim 1 are met, and Appellants have not presented arguments as to the merits of
claim 8.

DECISION
(1) The decision of the Examiner to reject claim 1 under § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention, is reversed
because the claim is definite and supported by the Specification.
(2) The Examiner’s anticipation and obviousness rejections of claims 1-8 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).

AFFIRMED

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