NEC Corporation and Sumitomo Chemical Co. Ltd. v. Entegris, Inc.

• Decision Date: 26 March 2007
• Docket Number: 006,Inter Partes Reexamination Control 95/000,Appeal 2006-3236
• Parties: NEC CORPORATION and SUMITOMO CHEMICAL CO., LTD., (United States Patent 6, 357, 595), Patent Owners-Appellants, v. ENTEGRIS, INC., Third-Party Requester-Respondent. Technology Center 3900
• Court: Patent Trial and Appeal Board

NEC CORPORATION and SUMITOMO CHEMICAL CO., LTD., (United States Patent 6, 357, 595), Patent Owners-Appellants, v. ENTEGRIS, INC., Third-Party Requester-Respondent.

Technology Center 3900

Appeal 2006-3236

Inter Partes Reexamination Control No. 95/000, 006

United States Patent and Trademark Office, Patent Trial and Appeal Board

March 26, 2007

This Opinion is Not binding Precedent of the Board.

HEARD January 9, 2007

For Patent Owners Daniel V. Williams SUGHRUE MION, PLLC

For Third-Party Requester Bradley J. Thorson Patterson, Thuente Skaar & Christensen, P.A.

Before JOHN C. MARTIN, LEE E. BARRETT, and JAMESON LEE Administrative Patent Judges.

DECISION ON APPEAL

BARRETT, Administrative Patent Judge.

This is a decision on appeal under 35 U.S.C. §§ 134(b) and 315(a) by the Patent Owners after a Right of Appeal Notice finally rejecting claims 1-11 and 16. Claims 12-15 have been canceled.

We affirm-in-part and enter new grounds of rejection.

INTER PARTES REEXAMINATION

A request was filed on December 4, 2002, by Third-Party Requester Entegris, Inc., Chaska, MN, for inter partes reexamination of U.S. Patent 6, 357, 595 (the '595 patent) issued March 19, 2002, to Shigeru Sembonmatsu and Manubu Ishikawa, based on Application 09/559, 348, filed April 27, 2000, entitled "Tray for Semiconductor Integrated Circuit Device," assigned to real parties in interest NEC Corporation and Sumitomo Chemical Co., Ltd., both of Japan, which claims the foreign filing priority benefit of Japanese Application 11/124326, filed April 30, 1999.

This inter partes reexamination was conducted under the regulations of 37 C.F.R. §§ 1.902-1.997 (effective Feb. 5, 2001), and 37 C.F.R. §§ 41.61-41.81 (effective September 13, 2004). The version of the regulations does not affect any issues in the appeal.

Both a patent owner and a third-party requester may appeal and a patent owner may be a party to any appeal taken by a third-party requester. 35 U.S.C. § 315. Thus, it is possible for the Requester, the Respondent here, to become the Appellant on appeal and for the Patent Owners, the Appellants here, to become Respondents or Cross-Appellants on appeal. To prevent confusion over the parties in any appeal from this decision, we refer in this opinion to the patent owners as the Patent Owners instead of Appellants and to the third-party requester as the Requester instead of the Respondent, except where "Appellants" and "Respondent" are used in the names of the briefs or are used in quotations.

BACKGROUND

The invention relates to a tray for storing a semiconductor integrated circuit device, such as an integrated circuit device in a ball grid array (BGA) package. Figure 1 of the '595 patent shows a side view of a BGA device.

(Image Omitted)

A BGA device 5 is characterized by a thin planar housing and a plurality of external terminals 1 on the lower surface of the housing usually arranged in a two-dimensional array. Each external terminal is a small solder ball.

A BGA semiconductor device is stored in a storage portion of a tray to be transported or subjected to tests (Specification, col. 1, 11. 26-29). A storage portion of a conventional tray is a recess having almost the same shape as that of the package of the semiconductor device (id. at 11. 29-31). It is important that there not be any contact between the solder ball and the tray. The conventional tray supports the peripheral portion outside the outermost ball terminals of the lower surface of the package of the semiconductor device with a peripheral ledge of the storage portion of the tray, and restrains horizontal movement of the package with a wall surface of the storage portion (id. at 11. 31-43). As packages have become more and more compact, the width of the peripheral portion of the lower surface of the package has become narrower making it more difficult to avoid contact between the ball terminals and the tray (id at 11. 44-51).

The '595 patent claims a tray having an inclined first wall surface for supporting the lower edges of the BGA semiconductor device package and a second wall surface for limiting horizontal movement of the BGA package.

(Image Omitted)

Figure 6 above is a sectional view of the tray. Each storage portion 14 has a first wall surface 24 which is inclined at an angle a greater that the angle p formed between the lower edge of the package and the outermost ball terminals (Fig. 1) to support a peripheral edge of the BGA package 5 (shown in place on the right in chain lines) without contacting the ball terminals. A second wall surface 28 extends upwardly from an upper edge of the first wall surface and is inclined from the horizontal at an angle larger than the angle of the first wall surface to limit horizontal movement of the package.

Independent claim 1 is reproduced below (omissions from the original patent claim 1 are enclosed in brackets and additions are underlined, see 37 C.F.R. §§ 1.941 and 1.530(f)).

1. A tray for storing a semiconductor integrated circuit device having a package and wiring terminals on a lower surface of the package, said tray comprising:

a substantially planar main body; and

a first storage portion provided on a first surface of said main body for storing the semiconductor integrated circuit device, said first storage portion having a bottom surface and a first wall surface extending from said bottom surface and arranged around the semiconductor integrated circuit device when the semiconductor integrated device is stored in said first storage portion;

a second wall surface disposed around a circumference of the semiconductor integrated circuit device so as to limit horizontal movement of the semiconductor integrated circuit device, said first wall surface being inclined at an angle so as to support an edge of the package of the semiconductor integrated circuit device such that the wiring terminals of the semiconductor integrated circuit device do not contact said first wall surface when the semiconductor integrated circuit device is stored in said first storage portion, and said second wall surface extending [from said first wall surface in a direction away from said first wall surface of said main body] upward from an upper edge of said first wall surface, wherein said second wall surface is inclined at an angle larger than the angle of said first wall surface, with respect to the horizontal.

Proposed new claim 16 in the reexamination is reproduced below. Claim 16 is almost identical to claim 1 in the '595 patent except that the word "wall" is eliminated, as indicated in brackets. For clarity, claim 16 is not underlined as required for a proposed new reexamination claim.

16. A tray for storing a semiconductor integrated circuit device having a package and wiring terminals on a lower surface of the package, said tray comprising:

a substantially planar main body; and

a first storage portion provided on a first surface of said main body for storing the semiconductor integrated circuit device, said first storage portion having a bottom surface and a first wall surface extending from said bottom surface and arranged around the semiconductor integrated circuit device when the semiconductor integrated device is stored in said first storage portion;

a second wall surface disposed around a circumference of the semiconductor integrated circuit device so as to limit horizontal movement of the semiconductor integrated circuit device, said first wall surface being inclined at an angle so as to support an edge of the package of the semiconductor integrated circuit device such that the wiring terminals of the semiconductor integrated circuit device do not contact said first wall surface when the semiconductor integrated circuit device is stored in said first storage portion, and said second wall surface extending from said first wall surface in a direction away from said first [wall] surface of said main body, wherein said second wall surface is inclined at an angle larger than the angle of said first wall surface, with respect to the horizontal.

THE REFERENCES

The Examiner relies on the following U.S. patent references:

Hutson

3, 946, 864

Mar. 30, 1976

Nemoto

5, 551, 572

Sep. 03, 1996

Brahmbhatt

5, 791, 486

Aug. 11, 1998

Murphy

5, 848, 703

Dec. 15, 1998

Narazaki

6, 202, 883

Mar. 20, 2001 (filed Jan. 28, 1999)

THE REJECTIONS

Claims 1, 2, 5-11, and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Brahmbhatt.

Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hutson and Brahmbhatt.

Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nemoto and Brahmbhatt.

Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Murphy and Brahmbhatt.

Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Narazaki and Brahmbhatt.

Claim 16 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Patent Owners regards as the invention.

Claim 16 stands rejected under 35 U.S.C. § 305 [sic, § 314(a) for inter partes reexamination] as enlarging the scope of the claims of the '595 patent.

Date MAIN PAPERS IN REEXAMINATION

12/04/02

Request for Inter Partes Reexamination

02/06/03

Order Granting/Denying Request for Inter Partes Reexamination

02/06/03

Office Action in Inter Partes Reexamination

04/07/03

Response to Office Action in Reexamination

05/07/03

Comments of the 3rd Party Requestor on the First Office Action and Amendment

10/07/03

Action Closing Prosecution (37 CFR 1.949)

11/07/03

Response to Action Closing Prosecution (37 C.F.R. § 1.949)

12/10/03

Comments of the 3rd Party...