Murata Manufacturing Co., Ltd.

Patent Trials and Appeals BoardDec 16, 2021

2021001846 (P.T.A.B. Dec. 16, 2021)

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. 16/034,385 07/13/2018 Junpei YASUDA 36856.4241 4309 54066 7590 12/16/2021 MURATA MANUFACTURING COMPANY, LTD. C/O KEATING & BENNETT, LLP 1800 ALEXANDER BELL DRIVE SUITE 200 RESTON, VA 20191 EXAMINER HATZILAMBROU, MARK ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 12/16/2021 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): JKEATING@KBIPLAW.COM cbennett@kbiplaw.com uspto@kbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUNPEI YASUDA Appeal 2021-001846 Application 16/034,385 Technology Center 2800 Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–19. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Murata Manufacturing Co., Ltd. Appeal Br. 2. Appeal 2021-001846 Application 16/034,385 2 BACKGROUND The subject matter on appeal is related to electronic modules including electronic components mounted on a substrate. Spec. ¶ 2; Appeal Br. 19 (Claims App., Claim 1). Figure 1 of the Drawings, reproduced below, depicts an embodiment of the claimed subject matter: Figure 1 is a sectional view of electronic module 100 containing substrate 1 having first main surface 1A with electrodes 2 provided thereon, and second main surface 1B with electrodes 3 provided thereon. Spec. ¶¶ 37, 38, 39. “Two first electronic components 4 each of which includes a hollow portion 5 are mounted on the first main surface 1A of the substrate 1.” Id. ¶ 41. First electronic components 4 are sealed with sealing resin 13. Id. ¶ 50. “A second electronic component 11 [which] includes no hollow portion is mounted on the second main surface 1B of the substrate 1,” and is not sealed with a sealing resin. Id. ¶¶ 47, 61. Sole independent claim 1 is illustrative of the claimed subject matter and is reproduced below with the dispositive limitation on appeal italicized: Appeal 2021-001846 Application 16/034,385 3 1. An electronic module comprising: a substrate that includes a first main surface and a second main surface; electrodes that are provided on the second main surface of the substrate; at least one first electronic component that includes electrodes provided on a mounting surface thereof on the substrate and that includes a hollow portion; at least one second electronic component that includes electrodes provided on a mounting surface thereof on the substrate and that includes no hollow portion; and a sealing resin; wherein the at least one first electronic component is mounted on the first main surface of the substrate and sealed with the sealing resin; the at least one second electronic component has a narrowest pitch between the electrodes provided on the mounting surface thereof when compared with any other second electronic components, and is mounted on the second main surface of the substrate; and the electrodes provided on the second main surface of the substrate and the electrodes of the at least one second electronic component that join the at least one second electronic component to the substrate are not sealed with sealing resin. Appeal Br. 19 (Claims App.) (emphasis added). REFERENCES Name Reference Date Lim US 9,054,077 B2 June 9, 2015 Hazeyama US 2006/0103028 A1 May 18, 2006 Takai US 2011/0249416 A1 Oct. 13, 2011 Aliane US 2015/0200034 A1 July 16, 2015 Toyoda US 2016/0060450 A1 Mar. 3, 2016 Beer US 2016/0225745 A1 Aug. 4, 2016 Appeal 2021-001846 Application 16/034,385 4 REJECTIONS On appeal, the Examiner maintains the following rejections under 35 U.S.C. § 103: I. Claims 1–6, 10–16, and 19 over Beer and Lim, as evidenced by Toyoda; II. Claim 7 over Beer, Lim, and Takai, as evidenced by Toyoda; III. Claims 8 and 9 over Beer, Lim, and Aliane, as evidenced by Toyoda; IV. Claims 17 and 18 over Beer, Lim, and Hazeyama, as evidenced by Toyoda. OPINION The dispositive issue on appeal is whether Beer discloses “electrodes that are provided on the second main surface of the substrate” as found by the Examiner and required by each claim on appeal. Non-Final Act.2 2–3. Upon considering Appellant’s arguments and the evidence in this appeal record, we are not persuaded that this finding is supported by a preponderance of the evidence. We, therefore, reverse the rejections. The Examiner maps the claimed “electrodes that are provided on the second main surface of the substrate” to Beer’s electrodes 251, finding that those electrodes are provided on Beer’s “second main surface” 150b. Non- Final Act. 2–3. Appellant contests that finding. Appeal Br. 12–16; Reply Br. 6–8. Appellant provides annotated versions of Beer’s Figures 1 and 2, as set forth below, for support: 2 We refer to the Non-Final Office Action dated April 27, 2020 from which this appeal is taken. Appeal 2021-001846 Application 16/034,385 5 Appellant’s annotated version of Beer’s Figures 1 and 2––which are each cross-sectional views of a semiconductor device––specifically point to Beer’s purported second main surface 150b of substrate 150, and depict metallization layer 251 as an element not in contact with surface 150b. Reply Br. 7. Beer identifies surface 150b as the “(bottom) main face.” Beer ¶ 44. Appellant also points to the description of electrodes 3 being “provided on the second main surface 1B” of substrate 1 illustrated in Figure 1 set forth supra and Figure 2A reproduced below. Appeal Br. 13 (citing Spec. ¶¶ 39, 40, 49, 63). Appeal 2021-001846 Application 16/034,385 6 Figure 2A of the Drawings illustrates substrate 1 having first main surface 1A having electrodes 2 provided thereon, and second main surface 1B having electrodes 3 provided thereon. Spec. ¶ 63. Both Figures 1 and 2A of the Drawings illustrate electrode 3 as on the bottom surface of substrate 1. In contrast, Beer’s electrodes 251 appear to be above the second main face 150b, identified by the Examiner as the second main surface of the substrate, or on the side of the substrate. Beer, Fig. 2. This is because Beer’s Figure 2, like Figures 1 and 2A of the Drawings, is a cross-sectional view of the electronic device. Beer ¶ 10; Spec. ¶ 28. In sum, because the Examiner has not established that Beer’s metallization layers/electrodes 251 are “provided on the second main surface of the substrate,” i.e., bottom surface 150b, the Examiner’s rejections are not sustained. CONCLUSION The Examiner’s rejections are reversed. Appeal 2021-001846 Application 16/034,385 7 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 10– 16, 19 103 Beer, Lim, Toyoda 1–6, 10– 16, 19 7 103 Beer, Lim, Takai, Toyoda 7 8, 9 103 Beer, Lim, Aliane, Toyoda 8, 9 17, 18 103 Beer, Lim, Hazeyama, Toyoda 17, 18 Overall Outcome 1–19 REVERSED