TEXAS INSTRUMENTS INCORPORATED

Patent Trials and Appeals BoardJun 17, 2021

2020004479 (P.T.A.B. Jun. 17, 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. 15/354,137 11/17/2016 Benjamin Stassen Cook TI-77455 1110 23494 7590 06/17/2021 TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, MS 3999 DALLAS, TX 75265 EXAMINER NGUYEN, SOPHIA T ART UNIT PAPER NUMBER 2822 NOTIFICATION DATE DELIVERY MODE 06/17/2021 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): uspto@ti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENJAMIN STASSEN COOK Appeal 2020-004479 Application 15/354,137 Technology Center 2800 Before KAREN M. HASTINGS, DONNA M. PRAISS, and JENNIFER GUPTA, Administrative Patent Judges. HASTINGS, 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 1–26. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Texas Instruments Incorporated. Appeal Br. 3. Appeal 2020-004479 Application 15/354,137 2 CLAIMED SUBJECT MATTER The claims are directed to a semiconductor device having enhanced adhesion arising from a nanoparticle layer having randomly configured voids. Claims 1 and 7, reproduced below, are illustrative of the claimed subject matter: 1. A device comprising: a substrate of a first material; a diffusion region at a surface of the substrate, the diffusion region including an admixture of a second material in the first material; a sintered structure adjoining the surface of the substrate, the sintered structure including: sintered particles of the second material; and a polymeric compound filling voids having random distribution and random three-dimensional configurations within the sintered structure; the particles of the second material having a first size, a first weight percentage and a first melting point temperature lower than a melting point temperature of the sintered structure; and the voids resulting from a removal of particles of a third material from within the sintered structure; the particles of the third material having a second size at least as large as the first size, a second weight percentage smaller than the first weight percentage, and a second melting point temperature higher than the first melting point temperature. 7. A method for substrate modification in a packaged semiconductor device, the method comprising: providing a substrate of a first material; additively depositing a layer of a solvent paste on a surface of the substrate, the solvent paste comprising: nanoparticles of a second material with a first weight percentage, the nanoparticles of the second material having a Appeal 2020-004479 Application 15/354,137 3 size that creates a melting point at a lower temperature than a melting point temperature of a bulk second material; and nanoparticles of a third material with a second weight percentage smaller than the first weight percentage, the nanoparticles of the third material having a size at least as large as the nanoparticle size of the second material and a melting point at a temperature higher than the melting point temperature of the nanoparticles of the second material; sintering together the nanoparticles of the second material at the melting point temperature of the second material, wherein a sintered structure surrounds the nanoparticles of the third material; creating voids in the sintered structure by removing the nanoparticles of the third material; and filling the voids with a polymeric compound; wherein the voids have random distribution and random three-dimensional configurations. (Appeal Br. 15–16) Independent claim 18 is directed to a method similar to that of claim 7 (Claims App. 17‒18). Appeal 2020-004479 Application 15/354,137 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Taoka US 2004/0161596 A1 Aug. 19, 2004 Ono US 2005/0109617 A1 May 26, 2005 Kajiwara US 2009/0096100 A1 Apr. 16, 2009 Yato US 2009/0189264 A1 July 30, 2009 Zhang US 9,305,869 B1 Apr. 5, 2016 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 9, 10 112(b) Indefiniteness 1, 3, 5, 6 102(a)(1) Yato 1–6, 26 103 Zhang, Yato, Ono 7–9, 11–25 103 Zhang, Yato, Ono, Taoka 10 103 Zhang, Yato, Ono, Taoka, Kajiwara OPINION After considering the evidence presented in this appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. We review the appealed rejections for error based upon the issues identified by Appellant 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.”). We sustain the Appeal 2020-004479 Application 15/354,137 5 Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. The § 112(b) Rejection Because the Appellant failed to provide any argument with regard to the § 112(b) rejection, we summarily affirm the Examiner’s § 112(b) rejection (Ans. 15). Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). The § 102 Rejection based on Yato The Examiner rejects claims 1, 3, 5, and 6 as being anticipated by the teachings of Yato (Final Act. 4‒5). Yato does not specifically teach “the voids resulting from a removal of particles of a third material from within the sintered structure” as recited in claim 1, however, the Examiner concludes that this limitation is a product by process limitation and, therefore, need not be specifically taught in the prior art (Final Act. 5). In the instant case, Appellant does not dispute that Yato teaches the claimed substrate, diffusion region, and sintered structure (Appeal Br. 6). Appellant argues that the voids resulting from the removal of particles impart distinctive structural characteristics. Id. These distinctive structural characteristics are described in Appellant’s Specification (Spec. ¶¶ 42‒43), where the voids are said to have a spherical shape with narrow entrances (Appeal Br. 7). The Examiner notes that these distinctive structural characteristics are not recited in claim 1 (Ans. 6‒7). Rather, claim 1 recites only the “voids having random distribution and random three-dimensional configurations.” Appeal 2020-004479 Application 15/354,137 6 Id. The claim does not include any further specific language about the voids (e.g., spherical shapes with narrow entrances as described in Appellant’s Specification) (Ans. 7). As indicated by the Examiner, the formation of the voids in claim 1 is drafted in a product-by-process format. The patentability of this type of claim does not depend on the process steps, except to the extent that the process steps are shown to result in properties not possessed by prior art products. It has long been held that “‘[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”’ SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). For product-by-process claims, the Examiner “bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than would be the case when a product is claimed in the more conventional fashion.” In re Fessmann, 489 F.2d 742, 744 (CCPA 1974). Thus, “when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable.” Id. (quote and citation omitted). Once the examiner establishes a prima facie case of anticipation or obviousness, the burden “to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product” shifts to the Appellant. Thorpe, 777 F.2d at 698 (citation omitted). Appeal 2020-004479 Application 15/354,137 7 In this case, Appellant’s claimed voids appear to be substantially the same as Yato’s voids. Accordingly, the burden shifted to Appellant to demonstrate that the claimed voids differ from the voids of the prior art. Thorpe, 777 F.2d at 698 (citing Best, 562 F.2d 1252, 1255 (CCPA 1977)). However, Appellant has not proffered adequate evidence showing any structural difference between the voids of the prior art and the claimed voids. Appellant has not directed us to any evidence that Yato’s voids do not have a random distribution and random three-dimensional configurations as claimed. Additionally, the Examiner points to Yato’s Fig. 6 as showing voids having random distribution and random three-dimensional configurations (Final Act. 4; Ans. 9). Appellant does not convincingly rebut the Examiner’s findings. Therefore, we affirm the Examiner’s prior art rejection of claims 1, 3, 5, and 6 under 35 U.S.C. § 102(a)(1) for the reasons presented by the Examiner and given above. The § 103 Rejection based on Zhang, Yato, and Ono The Examiner rejects claims 1‒6 and 26 as being obvious over the combination of Zhang, Yato, and Ono (Final Act. 6). The Examiner finds that Zhang discloses many of claim 1’s limitations (Final Act. 6‒7). Yato is relied upon to teach a polymeric compound (i.e., molding resin) filling the voids during the molding process in order to improve adhesion (Final Act. 7 (citing Yato ¶ 64)). The Examiner concludes that where Yato teaches the polymeric compound filling the voids improves adhesion, one of ordinary skill would have been motivated to have this improved adhesion in the Appeal 2020-004479 Application 15/354,137 8 invention of Zhang to prevent interfacial separation in Zhang’s device (Final Act. 7). Appellant argues that Zhang “specifically prohibits filling the spherical . . . pores with anything, much less a polymeric compound.” (Appeal Br. 8). Therefore, by Appellant’s reasoning, filling the open pore structure of Zhang with Yato’s polymeric compound frustrates Zhang’s principle of operation. (Id.) Appellant’s arguments are not persuasive of reversible error as they fail to consider the applied prior art as a whole and the inferences that one of ordinary skill would have made. It is well settled that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of [those] references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). The Examiner notes that nowhere in Zhang is there any specific prohibition of filling the spherical pores, contrary to Appellant’s assertion (Ans. 10). The Examiner explains that both Zhang and Yato speak to the “good” adhesion provided by the open cell structure and the prevention of interfacial delamination (Ans. 10‒11 (citing Zhang col. 4 ll. 27‒29 and Yato ¶¶ 63‒64, respectively)). An obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in Appeal 2020-004479 Application 15/354,137 9 doing so.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367—68 (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)). We agree with the Examiner that, based on the teachings of the prior art, one of ordinary skill in the art would have reasonably expected that at least some penetration of the polymeric compound (i.e., molding resin) into the open pores would provide improved adhesion in Zhang’s semiconductor device. Accordingly, we sustain the Examiner’s rejection of claims 1‒6 and 26 for the reasons presented by the Examiner and above. The § 103 Rejection based on Zhang, Yato, Ono and Taoka The Examiner rejects claims 7‒9 and 11‒25 as being obvious over the combination of Zhang, Yato, Ono, and Taoka (Final Act. 12). The motivation to combine Zhang and Yato is as described above with regard to claims 1‒6 and 26. The Examiner additionally relies on Ono and Taoka to teach the steps of additively depositing a layer of solvent paste comprising nanoparticles of a second material with a first weight percentage and nanoparticles of a third material with a second weight percentage (Final Act. 14‒15). Taoka, in particular, is relied upon to teach the limitation that the second weight percentage of the third material is smaller than the first weight percentage of the second weight material (Final Act. 15). Ono also discloses that the porosity, size of the pores, and pore shape of the material can be controlled by the organic powder (i.e., third material). (Id. (citing Ono ¶ 139)). Appeal 2020-004479 Application 15/354,137 10 Appellant presents the same argument regarding the combination of Zhang and Yato “frustrating” Zhang’s principle of operation as above with regard to the rejection of claims 1‒6 and 26 (Appeal Br. 10, 12). As these arguments have not been found persuasive, we determine that the Appellant has not shown that the Examiner erred in combining Zhang and Yato. Appellant additionally argues that Toaka is nonanalogous art because Taoka is directed to a diesel particulate filter and, therefore, is not pertinent to a semiconductor packaging process (Appeal Br. 11, 13). The Examiner responds that the production of Taoka’s porous sintered body, including the formation of voids, appears to be the same problem as faced by Appellant (Ans. 14). Thus, the Examiner considers it reasonable to look to Taoka for a method of producing a porous sintered body. Id. Since the Examiner is merely relying on Taoka for the relative weight percentages of the second and third materials (Ans. 14 (citing Taoka ¶ 87)), and Ono already speaks to the effects that amount of third material has on the final porous structure (see Ono ¶ 64), we are not persuaded of reversible error. That is, based on the teachings of the prior art, one of ordinary skill would have been motivated to have included the second and third materials in amounts as claimed in order to impart the desired porosity to the final structure. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). In light of these circumstances, Appellant has not sufficiently explained why the claimed subject matter is “more than the predictable use of prior art elements [arranged] according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appeal 2020-004479 Application 15/354,137 11 Accordingly, we sustain the Examiner’s rejection of claims 7‒9 and 11‒25 for the reasons presented by the Examiner and above. We also sustain the rejection of dependent claim 10, which Appellant does not separately argue even though claim 10 was separately rejected (Appeal Br. 14). CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9, 10 112(b) Indefiniteness 9, 10 1, 3, 5, 6 102(a)(1) Yato 1, 3, 5, 6 1–6, 26 103 Zhang, Yato, Ono 1–6, 26 7–9, 11–25 103 Zhang, Yato, Ono, Taoka 7–9, 11–25 10 103 Zhang, Yato, Ono, Taoka, Kajiwara 10 Overall Outcome 1–26 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED