NEXPERIA B.V.

Patent Trials and Appeals Board

Dec 14, 2021

2021001469 (P.T.A.B. Dec. 14, 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. 15/932,286 02/16/2018 Wolfgang Schnitt 0012551USU/4692C 1971 27623 7590 12/14/2021 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 EXAMINER TRINH, HOA B ART UNIT PAPER NUMBER 2813 MAIL DATE DELIVERY MODE 12/14/2021 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 WOLFGANG SCHNITT and TOBIAS SPROGIES ____________ Appeal 2021-001469 Application 15/932,286 Technology Center 2800 ____________ Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1-10 and 16-20.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Nexperia B.V. as the real party in interest. Appeal Brief, filed Aug. 3, 2020 (“Appeal Br.”) 1. 2 Final Office Action, dated Feb. 12, 2020 (“Final Act.”). Appeal 2021-001469 Application 15/932,286 2 STATEMENT OF THE CASE A. Background The subject matter on appeal relates to a semiconductor chip scale package arranged on a carrier. Specification, filed Feb. 16, 2018 (“Spec.”) 1:7-9. According to the Specification, a chip scale package by definition has an area no greater than 1.2 times that of the semiconductor die forming the package wherein the package contains a single die and is capable of direct surface mounting on a carrier. Id. at 1:21-24. Claim 1, the sole independent claim, is representative of the subject matter on appeal and reproduced below: 1. A semiconductor chip scale package comprising: a semiconductor die, the semiconductor die comprising: a first major surface opposing a second major surface; a plurality side walls extending between the first major surface and the second major surface; a plurality of electrical contacts arranged on the second major surface of the semiconductor die, each of the plurality of electrical contacts having a carrier-facing bottom surface; and an inorganic insulating material arranged on the plurality of side walls and on the first major surface, wherein the inorganic insulating material comprises a layer of the inorganic insulating material having a thickness in the range of from about 1 nm to about 100 nm, wherein the entire carrier-facing bottom surface of all of the plurality of electrical contacts of the semiconductor chip scale package are free of any of the inorganic insulating material. Appeal Br. 18 (Claims Appendix) (emphasis added). B. The Rejections The Examiner maintains the rejection of claims 1-4 and 16-20 under 35 U.S.C. § 103 as unpatentable over Lin (US 9,548,240 B2, iss. Jan. 17, Appeal 2021-001469 Application 15/932,286 3 2017) in view of Martin (US 7,939,932 B2, iss. May 10, 2011) and the rejection of claims 5-10 under 35 U.S.C. § 103 as unpatentable over Lin and Martin in further view of Han (US 2014/0183718 A1, pub. July 3, 2014). Final Act. 3, 9; Examiner’s Answer, dated Oct. 23, 2020 (“Ans.”) 3. OPINION After having considered the evidence presented in this Appeal and the positions of both Appellant and the Examiner, we determine Appellant identifies reversible error in the rejections of claims 1-10 and 16-20. Accordingly, we reverse the Examiner’s rejections of those claims. A. Rejection of Claim 1 over Lin and Martin The Examiner finds Lin discloses claim 1’s limitations except for the insulating material’s thickness and that the insulating layer is an inorganic material. Final Act. 3-4. The Examiner finds Martin discloses a semiconductor chip scale package comprising, inter alia, a plurality of electrical contact pads arranged on a bottom surface and an insulating layer made of inorganic material. Id. at 4. The Examiner determines modifying Lin with Martin’s insulating material would have been a matter of substitution of a known material based on its suitability for its intended use for protecting components from environmental debris. Id. at 5. The Examiner also determines the claimed thickness would have been a matter of routine experimentation. Id. at 6. Appellant contends the Examiner erred because the combination of Lin and Martin fails to teach or suggest all the limitations of claim 1, the sole independent claim pending in this Appeal. Specifically, Appellant directs us to insulation layer 204 partially covering the carrier facing side of contact pads 202 in Lin’s Figures 6a and 5d-5h. Appeal Br. 7-9. Appellant Appeal 2021-001469 Application 15/932,286 4 contends Lin’s Figures 6a and 5d-5h additionally show insulation layers 230 and 232 partially covering the carrier-facing surface of Lin’s contact pad 202 as well. Id. at 8-9 (citing, e.g., Lin 13:17-19). Appellant argues that Martin does not cure Lin’s deficiencies because Martin expressly encases its package 104 and electrical contacts 106 with its insulating film 108 on the bottom surface without first exposing its electrical contacts 106. Id. at 10-11 (citing Martin Fig. 2, 5:21-22). Even if claim 1’s “plurality of electrical contacts” reads on Martin’s solder (bumps) 202, Appellant argues the further limitation “the entire carrier-facing bottom surface of all of the plurality of electrical contacts . . . [is] free of any of the inorganic insulating material” is not met because the solder bumps are outside Martin’s package and the carrier facing bottom surface of Martin’s plurality of electrical contacts 106 (in the chip scale package) is covered with film 108. Id. at 12-14 (citing Martin Fig. 2). Appellant’s arguments are persuasive of error. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C. § 103 leads to three basic factual inquiries: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s obviousness rejection must be based on “. . . some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the Appeal 2021-001469 Application 15/932,286 5 challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s response to Appellant’s arguments regarding the prior art disclosures and the differences between the prior art and claim 1 is insufficient and, thus, the rejection of claim 1 lacks the necessary reasoning to support a legal conclusion of obviousness. The Examiner directs us to one contact pad 202 in Lin’s Figure 6a that does not have any insulating material 204 or 226 on the carrier facing surface. Ans. 4 (annotating Lin Fig. 6a). The Examiner does not adequately explain why it would have been obvious to modify Lin’s other carrier-facing contact pads so that all of Lin’s carrier- facing contact pads are free of insulating material as required by claim 1. Instead, the Examiner quotes Appellant’s statement that the Examiner’s position is that Lin’s contact pads 202 are free of insulating material 226. Ans. 5. The Examiner also states that Martin’s contacts 202, which are the electrical contacts soldered through insulating material layer to electrical contacts 106, are free of insulating material 108 and cure the deficiency in Lin. Id. at 5-6. However, the Examiner does not adequately explain why claim 1’s “plurality of electrical contacts” do not read on Martin’s electrical contacts 106, to which Martin’s contacts 202 are soldered. Claim 1 requires that the “plurality of electrical contacts” are free of any of inorganic insulating material on the carrier-facing bottom surface. Martin’s electrical contacts 106, however, are not free of inorganic insulating material on a Appeal 2021-001469 Application 15/932,286 6 carrier-facing bottom surface as shown in Martin’s Figure 2 annotated by Appellant and reproduced below. Appeal Br. 14. Martin’s annotated Figure 2 above is an enlargement of the bottom right corner of Martin’s semiconductor chip scale package that faces circuit board (carrier) 204 with a spherical solder (contact) 202 between the package and the circuit board. Rectangular electrical contact 106 is in the bottom right portion of the package surrounded on the bottom and right side by insulating film with the exception of the point at which electrical contact 106 touches the top of spherical contact 202. Appellant’s annotation emphasizes with a wide, dark arrow the carrier-facing portion of electrical contact 106 that extends beyond the diameter of spherical contact 202 and is covered by a layer of insulating film. Based on this record, the preponderance of the evidence supports Appellant’s position that Martin’s electrical contact 106 has a carrier-facing portion that is covered with insulating material and, therefore, does not cure the deficiency of Lin. Appellant also contends that the Examiner erred in modifying Lin’s semiconductor die encapsulant with Martin’s film, which is 1-2 nm thick to Appeal 2021-001469 Application 15/932,286 7 allow soldering to penetrate the film disclosures, because Lin’s insulation islands 230a extend at least 20 µm over Lin’s encapsulant. Appeal Br. 14-15 (citing Martin 5:10-18; Lin 13:30-32, 13:49-51). As Appellant points out in the Reply Brief, the Examiner does not respond to this argument concerning the incompatibility of Lin’s package design with Martin’s chip scale package insulating film. Reply Br. 7. Therefore, the record lacks sufficient reasoning for modifying Lin’s package design with Martin’s insulating material and solder contact. In sum, for the reasons expressed above and in the Appeal and Reply Briefs, we are persuaded of reversible error in the Examiner’s rejection of claim 1 over Lin and Martin. B. Rejection of Dependent Claims 2-10 and 16-20 Because each of claims 2-10 and 16-20 ultimately depends from claim 1 and the additional reference relied upon by the Examiner does not cure the deficiencies of the combination of Lin and Martin discussed above, we likewise reverse the rejections of dependent claims 2-10 and 16-20 for the same reasons.3 C. Conclusion In summary, after carefully considering the cited record in this Appeal, we are persuaded of reversible error in the Examiner’s § 103 3 We understand Appellant’s statement that “claims 1-5 and 16 stand or fall with independent claim 1” to be a typographical error and inclusive of claims 6-10 rejected over Lin, Martin, and Han because claim 5, which is listed in the grouping of the claims, is subject to the same rejection as claims 6-10. Appeal Br. 6. In the Appeal Brief, Appellant separately argues the rejections of claims 17-20 with respect to the carrier facing bottom surface of Lin’s contact pad being partially covered by insulating material. Appeal Appeal 2021-001469 Application 15/932,286 8 rejections. Therefore, we reverse the Examiner’s rejections of claims 1-10 and 16-20. CONCLUSION The Examiner’s rejections of claims 1-10 and 16-20 under 35 U.S.C. § 103 are reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 16-20 103 Lin, Martin 1-4, 16-20 5-10 103 Lin, Martin, Han 5-10 Overall Outcome 1-10, 16- 20 REVERSED Br. 15-17. Because the preponderance of the evidence based on the cited Appeal record supports Appellant’s position that Martin’s electrical contact 106 has a carrier-facing portion that is covered with insulating material and, therefore, does not cure the deficiency of Lin, we reverse the rejection of claims 17-20 for the same reasons.