DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/28/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11, 16, 18, 22-24, 26 and 33-34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Re claim 11, line 9, the phrase “the recess” lacks antecedent basis. Furthermore, the phrase is unclear and indefinite (i.e., a new recess and/or same as the at least one recess?).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11, 16, 18, 22, 24, 26 and 33-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Enquist, US Patent No. 9,953,941 B2.
Re claim 11. Enquist discloses an apparatus, comprising: a first direct bonding surface (i.e., fig. 4, the top most surface) of a bonding layer 3 of a microelectronic component (i.e., figs. 4-5), the bonding layer 3 comprising a dielectric material (fig. 4, col. 4, lines 35-40), the first direct bonding surface comprising a central bonding area flat and smooth enough for direct bonding (i.e., fig. 4; between the recesses); and at least one recess (i.e., fig. 4 or 5) in the first direct bonding surface and extending into the bonding layer 3, the at least one recess comprising a non-bonding area being laterally surrounded and defined by the dielectric material of the bonding layer 3 (fig. 5), the at least one recess including a vertical gap between a lower surface of the least one recess and the direct bonding surface (fig. 5), the vertical gap such that the recess forms a non-bonding area (fig. 6); and wherein the at least one recess (i.e., fig. 6) is nonoperational (i.e., off stage and/or no power) relative to circuit or electrical operational elements provided on or in the microelectronic component, see figs. 1-15 and cols. 1-14 for more details. Furthermore, a recitation of the intended use and/or functional language of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use and/or function, then it meets the claim.
Re claim 16. The apparatus of claim 11, further comprising at least a coating of a metal (i.e., col. 4, lines 49-65) in the at least one recess.
Re claim 18. The apparatus of claim 11, the at least one recess comprises a recessed metal pad or a metal pad with a dished surface (i.e., fig. 4) imparted by a chemical mechanical planarization (CMP) process, wherein the recessed metal pad or the metal pad with the dished surface is unconnected to the circuit or operational elements provided on or in the microelectronic component (fig. 4). Furthermore, the process limitation of how the recessed metal pad or metal pad is formed has no patentable weight in claim drawn to structure. Note that a product by process claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al, 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a product by process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product by process claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear.
Therefore, the phrase “by a chemical mechanical planarization (CMP) process” is thus non-limiting.
Re claim 22. The apparatus of claim 11, wherein the first direct bonding surface comprises multiple recesses (i.e., fig. 4).
Re claim 24. The apparatus of claim 11, wherein the at least one recess surrounds the central bonding area of the first direct bonding surface (i.e., fig. 5).
Re claim 26. The apparatus of claim 11, wherein the first direct bonding surface includes the central bonding area (i.e., fig. 6, between the recesses) and an annular peripheral bonding area (i.e., fig. 6, outside of the recesses etc.), the at least one recess comprising a recess between the central bonding area and the peripheral bonding area (fig. 6).
Re claim 33. The apparatus of claim 11, where in the at least one recess (fig. 5) is configured and positioned to arrest propagation of cracking, chipping, or delamination in the first direct bonding surface of the bonding layer. Furthermore, a recitation of the intended use and/or functional language of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use and/or function, then it meets the claim.
Re claim 34. The apparatus of claim 11, wherein the at least one recess (i.e, fig. 4) comprises a structure resulting from patterning and etching. Furthermore, the process limitation of how the recess is formed has no patentable weight in claim drawn to structure. Note that a product by process claim is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al, 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a product by process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product by process claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear.
Therefore, the processing limitation of the instant claim is thus non-limiting.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Enquist, US Patent No. 9,953,941 B2.
Enquist disclosed above; and cols 4-5 discloses the recesses including a coating of a metal. However, Enquist does not explicitly show that the metal is hydride-forming metal. But using the hydride-forming metal has been well-known in the semiconductor art. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co., Inc. v. Interchemical Corp. , 325 U.S. 327, 65 USPQ 297 (1945). "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig - saw puzzle." 65 USPQ at 301.).
Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the invention was made to select any suitable metal material (i.e., hydride -forming metal) in the device of Enquist in order to improve the performance of the device. Furthermore, the specification contains no disclosure of either the critical nature of the claimed process/arrangement (i.e. – hydride-forming metal) or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen limitations or upon another variable recited in a claim, the Applicant must show that the chosen limitations are critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11, 16, 18, 22-24, 26 and 33-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,296,044. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are within the scope of the cited prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK CHEN whose telephone number is (571)272-1689. The examiner can normally be reached Monday to Friday, 8am to 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yara J. Green can be reached at (571)270-3035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACK S CHEN/Primary Examiner, Art Unit 2893
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