Ex Parte Shah

Patent Trial and Appeal BoardDec 31, 2012

11685908 (P.T.A.B. Dec. 31, 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. 11/685,908 03/14/2007 Amip J. Shah ITL.1842US (P25306) 5449 47795 7590 12/31/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER PHAM, THANH V ART UNIT PAPER NUMBER 2894 MAIL DATE DELIVERY MODE 12/31/2012 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 AMIP J. SHAH ____________ Appeal 2010-008493 Application 11/685,908 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 2010-008493 Application 11/685,908 2 STATEMENT OF THE CASE Appellant is appealing claim 6. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to a semiconductor apparatus wherein a die is positioned between two die. Appeal Brief 8. Illustrative Claim 6. The apparatus of claim 1, including a third die over said second die, wherein the first die and the third die are to protect the second die from heat induced bit erasure during a packaging process. Rejections on Appeal Claim 6 stands rejected under 35 U.S.C. §102(b) as being anticipated by Lo (U.S. Patent Number 6,414,384 B1; issued July 2, 2002). Answer 4. Claim 6 stands rejected under 35 U.S.C. §102(b) as being anticipated by Lee (U.S. Patent Number 6,919,628 B2; issued July 19, 2005). Answer 4-5. Issue on Appeal Is claim 6 properly anticipated by Lo? ANALYSIS Appellant contends that: Appeal 2010-008493 Application 11/685,908 3 In the Advisory Action, without explanation, the Examiner apparently claims that even without the improper refusal to give limitations in the claim weight, the reference still anticipates. However, the Examiner has never explained how this is so and it is not incumbent upon the Applicant to devine [sic], without guidance, the basis for the Examiner's reasoning. Thus, the Applicant will wait to see if the Examiner clarifies the basis for the rejection and, if so, will respond in the reply. Therefore, the rejection should be reversed. Appeal Brief 11. The Examiner finds that Lo discloses a semiconductor apparatus having a first die 406 mounted on a substrate 402, a third die 408 and a second die 420 mounted there between the first and third dies. Answer 4. Appellant argues: With respect to the prior art rejection, the cited reference to Lo does not include two dummy chips sandwiching one functional chip. Instead, it includes two functional chips sandwiching one dummy chip 420. The two functional chips are 406 and 408. Thus, the first and third die are not to protect the second die because the second die is a dummy die. See column 4, lines 67 of Lo. Reply Brief 1. We agree with Appellant’s assessment of the physical configuration of Lo’s apparatus, however, we do not find Appellant’s arguments to be persuasive because the arguments are not commensurate with the scope of the claim. Claim 6 does not distinguish between functioning chips and non- functioning chips; claim 6 only recites die arrangement without such distinctions. Further, we note that the argued feature merely pertains to a statement of intended use “to protect the second die from heat induced bit Appeal 2010-008493 Application 11/685,908 4 erasure during a packaging process” (claim 6) “An ] intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). For patentability, apparatus claims must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Thus, even if a prior art device is used for a different purpose, it will nevertheless fully meet a recited apparatus if it contains all claimed structural features and is capable of performing the intended function. See Id. Therefore we sustain the Examiner’s rejection of claim 6 as being anticipated by Lo. We do not address the Examiner’s anticipation rejection of claim 6 by Lee since we have reached a decision on claim 6 based on the merits in view of Lo. DECISION The rejection of claim 6 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED llw