STATS ChipPAC, Ltd.

Patent Trials and Appeals Board

Aug 26, 2020

2019004805 (P.T.A.B. Aug. 26, 2020)

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.
14/466,923 08/22/2014 HeeJo Chi 2515.0350 CON 7066
112165 7590 08/26/2020
STATS ChipPAC/PATENT LAW GROUP:
Atkins and Associates, P.C.
123 West Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
DYKES, LAURA M
ART UNIT PAPER NUMBER
2892
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEEJO CHI, NAMJU CHO, and HANGIL SHIN

Appeal 2019-004805
Application 14/466,923
Technology Center 2800
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
BEVERLY A. FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 26–29, 31–36, 38–42, and 44–49. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as STATS ChipPAC
Pte. Ltd. Appeal Br. 1.
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Application 14/466,923

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CLAIMED SUBJECT MATTER
Claims 26 and 32 are illustrative of Appellant’s subject matter on
appeal and are set forth below:
26. A semiconductor device, comprising:
a substrate as a single material including a base plate
and a row of first bodies and a row of second bodies
extending from a surface of the base plate, wherein the
surface of the base plate completely surrounds each of the
row of first bodies and each of the row of second bodies;
a semiconductor die disposed between the row of first
bodies and the row of second bodies;
an encapsulant deposited around the semiconductor
die and over the substrate around each of the row of first
bodies and each of the row of second bodies, wherein the
encapsulant includes a plurality of first openings extending
to each of the row of first bodies and to each of the row of
second bodies;
a conductive layer formed in at least one of the first
openings and contacting at least one of the row of first
bodies; and
an insulating layer formed over the encapsulant and
extending into the at least one of the first openings over the
conductive layer.

32. A semiconductor device, comprising:
a semiconductor die;
an encapsulant deposited around the semiconductor
die, wherein the encapsulant includes a plurality of first
openings arranged in a row and formed from a first surface
of the encapsulant partially through the encapsulant;

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a conductive layer formed over the first surface of the
encapsulant and extending into the first openings in
the encapsulant; and
an insulating layer formed over the conductive layer and
extending into the first openings over the conductive layer;
wherein the encapsulant includes a plurality of second
openings arranged in a row and formed from a second surface
of the encapsulant opposite the first surface of the
encapsulant partially through the encapsulant and aligned with the
first openings and extending to the conductive layer.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kinsman US 2006/0043611 A1 Mar. 2, 2006
O et al.
(“O”)
US 2008/0283996 A1 Nov. 20, 2008
Kim et al.
(“Kim”)
US 2009/0039491 A1 Feb. 12, 2009
Zudock et al.
(“Zudock”)
US 2010/0193928 A1 Aug. 5, 2010
Chen et al.
(“Chen”)
US 2011/0084382 A1 Apr. 14, 2011
REJECTIONS
1. Claims 32, 35, 39, 42, and 45 are rejected under pre-AIA 35
U.S.C. §102(a)(1) as being anticipated by Kim.
2. Claims 32, 35, and 36 are rejected under pre-AIA 35 U.S.C.
§102(a)(1) as being anticipated by Chen.
3. Claims 26–29, 32–36, 39–42, and 45–48 are rejected under
pre-AIA 35 U.S.C. §103(a) as being unpatentable over O in view of
Kinsman.
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4. Claims 38 and 44 are rejected under pre-AIA 35 U.S.C. §103(a) as
being unpatentable over Kim in view of Zudock.
5. Claim 38 is rejected under pre-AIA 35 U.S.C. §103(a) as being
unpatentable over Chen in view of Zudock.
6. Claims 31, 38, 44, and 49 is rejected under pre-AIA 35 U.S.C.
§103(a) as being unpatentable over O and Kinsman as applied to claims 26
and 46 above, further in view of Zudock.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon review of the
evidence and each of the respective positions set forth in the record, we find
that the preponderance of evidence supports Appellant’s position in the
record. Accordingly, we reverse each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the record by Appellant, and add the
following for emphasis.

Rejection 1
We refer to the Examiner’s rejection and stated findings on pages 5–7
in the Final Office Action.
Appellant’s response to the Examiner’s Rejection 1 is set forth on
pages 23–25 of the Appeal Brief and on pages 5–6 of the Reply Brief.
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Therein, Appellant disputes the Examiner’s finding that conductive pattern
110 of Kim is arranged in a row of two that results in a plurality of second
openings in encapsulant 122 of Kim. Appellant explains that, in Kim,
insulating body 122 is formed over conductive pattern 110 and insulating
body 108, and refers to Figure 4A of Kim in this regard (reproduced below).

Kim’s Figure 4A
Figure 4A, above, is a cross-sectional view of an embodiment of a
semiconductor package according to Kim’s disclosure. Kim ¶¶ 20, 71.
Appellant submits that a person skilled in the art would not interpret
insulating body 122 of Kim, formed over conductive pattern 110, as a
plurality of second openings arranged in a row as recited in Appellant’s
claim 32. Appellant argues that Kim has no disclosure that conductive
pattern 110 is arranged in a row to constitute a plurality of second openings
arranged in a row.
In response to Appellant’s argument, the Examiner reiterates that
Figure 4A of Kim depicts conductive pattern 110 arranged in a row of two,
resulting in a plurality of second openings in encapsulant 122. Ans. 30. The
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Examiner refers to Appellant’s Figure 4m (reproduced below), and states
that it depicts the claimed second openings recited in claim 32, showing
openings formed in encapsulant 146 that are filled by substrate 138.2 Ans.
30. The Examiner concludes that openings created by 110 of
Kim, occupying space within the footprint of the encapsulant 122, is
interpreted as applicable to second openings recited in claim 32. Ans. 30.
Appellant’s Figure 4m is reproduced below.

Appellant’s Figure 4m
Figure 4m, above, illustrates a structure formed in an intermediate step in a
process of using a leadframe with integrated bodies to form openings
through an encapsulant for vertical interconnect of a semiconductor die,
according to Appellant’s Specification. Spec. ¶¶ 15, 36, 46.
However, as Appellant states on page 4 of the Appeal Brief, it is
Appellant’s Figure 4o that depicts the claimed plurality of second openings
172. Appeal Br. 4. Hence, the Examiner’s reliance upon Figure 4m is in
error, and results in a flawed claim interpretation. A proper claim
interpretation is explained below.
Appellant’s Figure 4o is reproduced below.

2 Paragraph 39 on page 15 of the Specification refers to item 138 as a base
plate.
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Appellant’s Figure 4o
The plurality of second openings 172 are shown above in Figure 4o. Claim
32 recites that the encapsulant 146 includes a plurality of second
openings 172 arranged in a row and formed from a second surface of the
encapsulant 146 opposite the first surface of the encapsulant 146
partially through the encapsulant 146 and aligned with the first openings
154 and extending to the conductive layer 160. We agree with Appellant
that the Examiner has not made sufficient findings to support the
anticipation rejection regarding these claim elements. The Examiner
misconstrues the elements of claim 32 by erroneously relying upon
Appellant’s Figure 4m, and therefore does not make the necessary fact
findings sufficient to support the rejection. We thus reverse Rejection 1.

Rejection 2
We refer to the Examiner’s stated findings for Rejection 2 made on
pages 7–9 in the Final Office Action.

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Appellant’s response to the Examiner’s Rejection 2 is set forth on
pages 23–24 of the Appeal Brief. Therein, Appellant submits that Chen
does not teach that Chen’s encapsulant includes a plurality of second
openings arranged in a row and formed from a second surface of the
encapsulant opposite the first surface of the encapsulant partially through the
encapsulant and aligned with the first openings and extending to the
conductive layer. Appellant states that the Examiner identifies the space
occupied by redistribution layer 102b in Chen as the second openings recited
in claim 32. Appellant argues that in Chen, fill material layer 104 is formed
over redistribution layer 102b as shown in Figure 4E of Chen. Figure 4E of
Chen is reproduced below.

Figure 4E of Chen
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Figure 4E, above, depicts a cross section of an embodiment of a method for
fabricating a chip package according to Chen’s disclosure. Chen ¶¶ 14, 33.
Appellant argues that one skilled in the art would not interpret Chen’s
fill material layer 104, formed over redistribution layer 102b, as a plurality
of second openings arranged in a row because Chen has no disclosure that
redistribution layer 102b is arranged in a row to constitute a plurality of
second openings arranged in a row as claimed. Appeal Br. 23–24. We
agree. Notably, in response to this argument, the Examiner again
erroneously relies upon Appellant’s Figure 4m when interpreting the
elements of claim 32 (Ans. 31–32), and as a result, does not make the
needed fact findings to support the anticipation rejection for certain claim
elements for the reasons provided by Appellant in the record. We therefore
reverse Rejection 2.

Rejection 3
We can focus on independent claim 26 in making our determinations
herein.
We refer to the Examiner’s conclusions and stated findings for
Rejection 3 made on pages 10–26 in the Final Office Action. Therein, the
Examiner acknowledges that O does not teach a row of first bodies and a
row of second bodies. The Examiner relies upon O for teaching a first
body (left protruding body of 31 contacting 33 shown in Figure 6 of O) and
a second body (right protruding body of 31 contacting 33). Final Act. 10.
The Examiner relies upon Kinsman for teaching a row of first bodies and a
row of second bodies, and refers to supports 150 shown in Figure 4 of
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Kinsman. Final Act. 12–13. The Examiner concludes it would have been
obvious to have modified the device of O, to include a row of first bodies
and a row of second bodies extending from a surface of the base
plate, wherein the surface of the base plate completely surrounds each of the
row of first bodies and each of the row of second bodies, a semiconductor
die disposed between the row of first bodies and the row of second bodies,
an encapsulant deposited around the semiconductor die and over the
substrate around each of the row of first bodies and each of the row of
second bodies, wherein the encapsulant includes a plurality of first openings
extending to each of the row of first bodies and to each of the row of
second bodies, as taught by Kinsman, in order to decrease the lateral width
of the semiconductor device and save valuable real estate in electronic
devices (Kinsman ¶ 30). Final Act. 12–13.
Appellant argues that O describes a different type of structure, i.e. the
portion of substrate 31 outside cavity 32 is a continuous surface
around cavity 32. O, Figure 5. Appeal Br. 8. Appellant states that cavity 32
in O is formed in substrate 31, and chip 37 is mounted in the cavity so that
redistribution pads 33 are about the same level as chip pads 39. O, Figure 6.
Appeal Br. 10. Appellant states that the Examiner believes that a person of
ordinary skill in the art could produce multiple devices from O using
the structure as described in Kinsman. Appellant states that the
Examiner believes O is extendable to a row of the first bodies and a row of
the second bodies to decrease the lateral width of the semiconductor device
and save valuable real estate in electronic devices as suggested by Kinsman.
Appellants disagree and argue that the Examiner is piecemealing references
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together and extrapolating outcomes without basis from the references or
reasonable rationale in the mind of the person skilled in the art. Reply Br. 2.
Appellant argues that O’s structure does not have the same
requirements as Kinsman, and O has no purpose for individual supports 150
in substrate 31. Appeal Br. 11. Appellant states that O is not concerned with
a capillary wire bonding tool, and O does not describe making electrical
connection to circuits within substrate 31. Reply Br. 2. Appellant argues
that even if O uses a capillary wire bonding tool, cavity 32 makes
redistribution pads 33 the same level as chip pads 39 and solves the spacing
problem from Kinsman. Appellant states that because O’s redistribution
pads 33 formed on substrate 31 perform only the function of redistributing
chip pads 39, redistribution pads 33 are formed to be larger than chip pads
39 (O ¶ 34). Reply Br. 2. Appellants states that accordingly, pitch P2 of O’s
redistribution pads 33 is greater than pitch P1 of chip pads 39. Id. Appellant
states that there is no reasonable rationale to make the proposed modification
especially because there would be no decrease in lateral width of chip 37 by
making individual supports under redistribution pads 33. Appeal Br. 11.
We are persuaded by the aforementioned arguments. Setting forth a
prima facie case of obviousness requires establishing that the applied prior
art would have provided one of ordinary skill in the art with an apparent
reason to modify the prior art to arrive at the claimed invention. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). On this record, the
Examiner’s proposed modification of O appears to be premised on an
impermissible use of hindsight after review of Appellant’s disclosure rather
than on a supported reason to modify O available to an ordinarily skilled
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artisan and consistent with the teachings thereof. KSR, 550 U.S. at 421
(cautioning that the fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a “temptation to read into the prior art the teachings of the
invention in issue”)).
In view of the above, we reverse Rejection 3. Rejection 5 involves a
rejection of claim 38 which depends upon claim 32, and therefore we also
reverse Rejection 5 for the same reasons. Rejection 6 involves the
combination of O in view of Kinsman, further in view of Zudock and
therefore involves the same deficiencies discussed with regard to Rejection
3, and therefore we also reverse Rejection 6.

Rejection 4
Claims 38 and 44 are rejected as being obvious over Kim in view of
Zudock in Rejection 4. Claim 38 depends upon claim 32. Claim 44 depends
upon claim 39. These dependent claims fall with respective independent
claims 32 and 39, and therefore we reverse Rejection 4 for same reasons that
we reversed Rejections 1 and 2.

CONCLUSION
We reverse the Examiner’s decision.

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DECISION SUMMARY

In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Reversed Affirmed
32, 35, 39,
42, 45
102(a)(1) Kim 32, 35, 39,
42, 45

32, 35, 36 102(a)(1) Chen 32, 35, 36
26–29,
32–36,
39–42, 45–48
103(a) O, Kinsman 26–29,
32–36,
39–42, 45–48

38, 44 103(a) Kim, Zudock 38, 44
38 103(a) Chen, Zudock 38
31, 38, 44, 49 103(a) O, Kinsman,
Zudock
31, 38, 44, 49
Overall
Outcome
26–29,
31–36,
38–42, 44–49

REVERSED