TEXAS INSTRUMENTS INCORPORATED

Patent Trials and Appeals Board

Mar 31, 2022

2021004525 (P.T.A.B. Mar. 31, 2022)

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. 15/951,003 04/11/2018 Jeffrey MORRONI TI-78749 7845 23494 7590 03/31/2022 TEXAS INSTRUMENTS INCORPORATED P O BOX 655474, MS 3999 DALLAS, TX 75265 EXAMINER SAYADIAN, HRAYR ART UNIT PAPER NUMBER 2814 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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 JEFFREY MORRONI, RAJEEV DINKAR JOSHI, SREENIVASAN K. KODURI, SUJAN KUNDAPUR MANOHAR, YOGESH K. RAMADASS, and ANINDYA PODDAR Appeal 2021-004525 Application 15/951,003 Technology Center 2800 BEFORE BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and GEORGE C. BEST, Administrative Patent Judges. 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 1-8, 15-17, 19, and 20. 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(a). Appellant identifies the real party in interest as Texas Instruments Inc. Appeal Br. 3. Appeal 2021-004525 Application 15/951,003 2 CLAIMED SUBJECT MATTER Claim 1 illustrates Appellant’s subject matter on appeal and is set forth below: 1. A semiconductor package, comprising: a leadframe; a semiconductor die attached to the leadframe; and a passive component electrically connected to the semiconductor die through the leadframe; the leadframe including a cavity in a side of the leadframe opposite the semiconductor die, and at least a portion of the passive component residing within the cavity, wherein the passive component is under the semiconductor die, and vertically aligns with the semiconductor die from a cross-sectional view of the semiconductor package. Appeal Br. 11 (Claims Appendix). REFERENCES The Examiner relies upon the following prior art: Name Reference Date Hernandez US 4,994,936 Feb. 19, 1991 Lee US 2002/0163015 Al Nov. 7, 2002 Sharma US 2012/0086090 Al Apr. 12, 2012 Kelkar US 2013/0181332 Al July 18, 2013 Appeal 2021-004525 Application 15/951,003 3 REJECTIONS2 1. Claims 1-3, 6-8, 15, 17, and 20 are rejected under 35 U.S.C. § 103 over Sharma in view of Hernandez. 2. Claims 4 and 19 are rejected under 35 U.S.C. § 103 over Sharma in view of Hernandez, further in view of Lee. 3. Claims 5 and 16 are rejected under 35 U.S.C. § 103 over Sharma in view of Hernandez, further in view of Kelkar. OPINION We refer to the Examiner’s statement of Rejection 1 made on pages 4-7 of the Final Office Action. Therein, the Examiner makes findings with regard to Sharma, and recognizes that Sharma does not teach the recited claim element of the leadframe including a cavity in a side of the leadframe opposite the semiconductor die, and at least a portion of the passive component residing within the cavity, wherein the passive component is under the semiconductor die, and vertically aligns with the semiconductor die from a cross- sectional view of the semiconductor package.3 Final Act. 4-5. The Examiner relies upon Hernandez for teaching this limitation. Final Act. 5. 2 The rejection of claim 18 as indefinite under 35 U.S.C. § 112(b) is moot because claim 18 is cancelled. See Claims Appendix on page 13 of Appeal Brief. 3 On page 3 of the Appeal Brief, Appellant corresponds the recitations of claim 1 with the embodiment of Figures 1B, 1F, and 1G of the Specification. However, it must be noted that this claim language actually encompasses the embodiment of Figure 5E and Figure 6 of Appellant’s Specification. See Appeal 2021-004525 Application 15/951,003 4 Appellant argues, inter alia, that the proposed modification of Sharma according to Hernandez lacks a method of making an electrical connection between the die and the capacitor of Sharma because of insulator 202 of Sharma for the reasons set forth on pages 5-6 of the Appeal Brief. This point is well taken because while the Examiner relies on Hernandez’s teaching of placing a passive component such that it resides on a side of the leadframe opposite the semiconductor die, wherein the passive component is under the semiconductor die and vertically aligned with the semiconductor die, the configuration in Hernandez does not also teach that the passive component resides within the cavity in the side of the leadframe opposite the semiconductor die as recited in claim 1. Hence, the proposed modification does not address every element of the claim. “[T]he prior art reference (or references when combined) must teach or suggest all the claim limitations.” In re Royka, 490 F.2d 981, 985 (CCPA 1970). In view of the above, we reverse Rejection 1. We reverse Rejections 2 and 3 for the same reasons (the Examiner does not rely upon the additionally applied references in these rejections to cure the stated deficiencies of Rejection 1). CONCLUSION We reverse the Examiner’s decision. Spec. ¶ 29 (“In this embodiment, the cavity is on a side of the leadframe opposite the semiconductor die . . . .”). Appeal 2021-004525 Application 15/951,003 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 6-8, 15, 17, 20 103 Sharma, Hernandez 1-3, 6-8, 15, 17, 20 4, 19 103 Sharma, Hernandez, Lee 4, 19 5, 16 103 Sharma, Hernandez, Kelkar 5, 16 Overall Outcome 1-8, 15-17, 19, 20 REVERSED