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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 January 2026 has been entered.
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.
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (U.S. 2012/0322208) in view of Manack et al. (U.S. 2013/0221455) and Nair et al. (U.S. 2019/0019764).
Regarding Claim 1, Uchida et al., Figures 1a-1b, discloses a semiconductor package, comprising:
a semiconductor die including terminals (die 101);
a portion of a leadframe including a die attach pad coupled to the semiconductor die and a plurality of leads, at least some of the plurality of leads being electrically coupled to the terminals (die pad 104, leads 104, terminals 101);
a sensor on a surface of the semiconductor die (sensor 101b);
laser shielding forming a perimeter around the sensor on the surface of the semiconductor die (shielding 102); and
a mold compound covering the semiconductor die except for an area inside the perimeter on the surface of the semiconductor die such that the sensor is exposed to an external environment (mold compound 106).
However, they do not explicitly disclose wherein the laser shielding is coupled to a ground potential. In the same field of endeavor, Manack et al. discloses a device wherein a shield on a sensor package comprises a metal (Manack et al., sensor chip 101, shielding 111, molding 120, Figure 1, Paragraph 28). Additionally, in the same field of endeavor, Nair et al. discloses a device wherein a shielding is coupled to a ground potential (Nair et al., shielding 114, ground plane 104, TSV 122, Figure 1). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the laser shielding to be coupled to a ground potential in Uchida et al. in view of Manack et al. and Nair et al. in order to protect the sensor during processing (Manack et al., Paragraph 28) and protect the back and sides of the die from being affected by EMI and RFI (Nair et al., Paragraph 21 and 23).
Regarding Claim 2, Uchida et al. in view of Manack et al. and Nair et al. further discloses a device wherein a surface of a mold compound adjacent to an area inside a perimeter of a laser shield includes drill marks (Manack et al., die 101, sensor 105, shielding 111, Figure 1, Paragraph 41). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a surface of the mold compound adjacent the area inside the perimeter to include laser drill marks in Uchida et al. in view of Manack et al. and Nair er al. in order to safely and cost-effectively embed a sensor in miniaturized boards as part of a large integrated system (Manack et al., Paragraphs 08-09). Please note that the language, term, or phrase "the surface…include laser drill marks," is directed towards the process of making a cavity in an encapsulation using a laser drill. It is well settled that "product by process" limitations in claims drawn to structure are 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 Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, 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 produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "the surface…include laser drill marks" only requires a non-uniform surface of a mold compound adjacent the area inside the perimeter, which does not distinguish the invention from Uchida et al. in view of Manack et al. and Nair et al., who teaches the structure as claimed.
Regarding Claim 4, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the laser shielding comprises a metal selected from the group consisting of: copper; titanium; titanium-tungsten; gold; platinum; iron; aluminum; and silver (Manack et al., sensor chip 101, shielding 111, molding 120, Figure 1, Paragraph 28).
Regarding Claim 5, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the laser shielding comprises a metal alloy including copper with a thickness in a range of 1000 Angstrom (A) to 10,000 A (Manack et al., sensor chip 101, shielding 111, molding 120, Figure 1, Paragraph 28).
Regarding Claim 6, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein a portion of the laser shielding is exposed to the external environment and forms a contiguous surface with the mold compound about the perimeter around the sensor (Uchida et al., Figures 1a-1b, shield 102, mold compound 106).
Regarding Claim 7, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the terminals are on the same side of the semiconductor die as the sensor (Uchida et al., Figures 1a-1b, chip 101, sensor 101b, wire bonds 105 to terminals).
Regarding Claim 8, Uchida et al. in view of Manack et al. and Nair et al. further discloses wire bonds extending from the terminals, wherein the wire bonds are in electrical contact with at least some of the plurality of leads (Uchida et al., Figures 1a-1b, wire bonds 105, terminals 101, leads 104).
Regarding Claim 9, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the sensor includes one or more of a group consisting of: a pressure sensor; a humidity sensor; a light sensor; a dewpoint sensor; and an electrochemical sensor (Uchida et al., Paragraph 44).
Regarding Claim 10, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the semiconductor package is a leadless package (Uchida et al., Figures 1a-1b, package 108).
Claims 21-22 and 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (U.S. 2012/0322208) in view of Manack et al. (U.S. 2013/0221455) and Nair et al. (U.S. 2019/0019764).
Regarding Claim 21, Uchida et al., Figures 1a-1b discloses a semiconductor package, comprising:
a mold compound covering a semiconductor die except for an area inside a perimeter on a surface of the semiconductor die such that a sensor on the surface of the of the semiconductor die is exposed to an external environment (mold compound 106, die 101, sensor 101b);
a portion of leadframe including a die attach pad coupled to the semiconductor die (leadframe 104); and
laser shielding forming the perimeter around the sensor on the surface of the semiconductor die (laser shielding 102).
However, they do not explicitly disclose wherein the laser shielding is coupled to a ground potential. In the same field of endeavor, Manack et al. discloses a device wherein a shield on a sensor package comprises a metal (Manack et al., sensor chip 101, shielding 111, molding 120, Figure 1, Paragraph 28). Additionally, in the same field of endeavor, Nair et al. discloses a device wherein a shielding is coupled to a ground potential (Nair et al., shielding 114, ground plane 104, TSV 122, Figure 1). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the laser shielding to be coupled to a ground potential in Uchida et al. in view of Manack et al. and Nair et al. in order to protect the sensor during processing (Manack et al., Paragraph 28) and protect the back and sides of the die from being affected by EMI and RFI (Nair et al., Paragraph 21 and 23).
Regarding Claim 22, Uchida et al. in view of Manack et al. and Nair et al. further discloses a device wherein a surface of a mold compound adjacent to an area inside a perimeter of a laser shield includes drill marks (Manack et al., die 101, sensor 105, shielding 111, Figure 1, Paragraph 41). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a surface of the mold compound adjacent the area inside the perimeter to include laser drill marks in Uchida et al. in view of Manack et al. and Nair er al. in order to safely and cost-effectively embed a sensor in miniaturized boards as part of a large integrated system (Manack et al., Paragraphs 08-09). Please note that the language, term, or phrase "the surface…include laser drill marks," is directed towards the process of making a cavity in an encapsulation using a laser drill. It is well settled that "product by process" limitations in claims drawn to structure are 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 Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, 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 produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "the surface…include laser drill marks" only requires a non-uniform surface of a mold compound adjacent the area inside the perimeter, which does not distinguish the invention from Uchida et al. in view of Manack et al. and Nair et al., who teaches the structure as claimed.
Regarding Claim 24, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the laser shielding comprises a metal selected from the group consisting of: copper; titanium; titanium-tungsten; gold; platinum; iron; aluminum; and silver (Manack et al., sensor chip 101, shielding 111, molding 120, Figure 1, Paragraph 28).
Regarding Claim 25, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the laser shielding comprises a metal alloy including copper with a thickness in a range of 1000 Angstrom (A) to 10,000 A (Manack et al., sensor chip 101, shielding 111, molding 120, Figure 1, Paragraph 28).
Regarding Claim 26, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein a portion of the laser shielding is exposed to the external environment and forms a contiguous surface with the mold compound about the perimeter around the sensor (Uchida et al., Figures 1a-1b, shield 102, mold compound 106).
Regarding Claim 27, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the semiconductor die further comprises terminals and wherein the terminals in the semiconductor die are on the same side as the sensor (Uchida et al., Figures 1a-1b, terminals connected to wirebonds 105, sensor 101b).
Regarding Claim 29, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the sensor includes one or more of a group consisting of: a pressure sensor; a humidity sensor; a light sensor; a dewpoint sensor; and an electrochemical sensor (Uchida et al., Paragraph 44).
Regarding Claim 30, Uchida et al. in view of Manack et al. and Nair et al. further discloses wherein the semiconductor package is a leadless package (Uchida et al., Figures 1a-1b, package 108).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 21have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Abbigale Boyle whose telephone number is 571-270-7919. The Examiner can normally be reached from 11 A.M to 7 P.M., Monday through Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Zandra Smith, can be reached at 571-272-2429. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Abbigale Boyle
Examiner, Art Unit 2899
/ABBIGALE A BOYLE/Examiner, Art Unit 2899
/DALE E PAGE/ Supervisory Patent Examiner, Art Unit 2899
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