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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2026 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (US 2010/0246152) in view of Jain (US 2006/0063351).
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Regarding claim 1, as shown above in figure 32T, Lin discloses:
1. An apparatus comprising: an optical device 102; an electrically
conductive bond pad 600; a multi-layer stack 821 of electrically conductive
materials on the bond pad, the stack including a first electrode layer 82 as a top
layer; and a second electrode layer 89 disposed at least partially on the optical
device 22 and on the first layer 82.
Lin is silent with respect to the first electrode layer and the second electrode layer are made of ITO material.
Jain discloses an optical device having electrode layers 24, 40 made of well-known material ITO [0010].
The present invention and the prior art are in the same field of endeavor, namely semiconductor packaging device.
Therefore, it would have been obvious to one of ordinary skill in the art before
the effective filing date of the claimed invention was made to integrate and/or to apply the teachings of Lin to teachings electrode layers made of ITO material as taught by Jain, because it is desirous in the art to achieve the predictable result of minimizing the cost of manufacturing the optical device.
NOTE, it is well settled that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. V. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960); Ritchie V. Vast Resources Inc. d/b/a Topco Sales, 90 USPQ2d 1668 (Fed. Cir. 2009); and MPEP § 2144.07. Regarding to any specific suggestion or teaching in the references to combine prior art, KSR forecloses that argument where a specific teaching, suggestion, or motivation is required to support a finding of obviousness. Specifically, the motivation needs not be found in the references sought to be combined, but may be found in any number of sources including common knowledge, the prior art as
a whole, or the nature of the problem itself. See Board decision Ex parte Smith, -- USPQ2d--, slip op. at 20, (BD. Pat. App. & Interf. June 25, 2007), and KSR International Co. V. Teleflex Inc., 550 U.S. --, 82 USPQ2d 1385 (2007). It is noted that when there is motivation to solve a problem such as a design need or a market pressure and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was
obvious under § 103. KSR, 127 S. Ct. at 1742. MPEP 2143 (E).
As to claim 2, figure 32T, the combined teaching of Lin and Jain discloses:
2. (Original) The apparatus of claim 1 wherein the first ITO layer has a
composition that differs from that of the second ITO layer depending on the
material selection.
NOTE, it is well settled that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. V. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960); Ritchie V. Vast Resources Inc. d/b/a Topco Sales, 90 USPQ2d 1668 (Fed. Cir. 2009); and MPEP § 2144.07.
As to claim 3, figure 32T, the combined teaching of Lin and Jain discloses:
3. The apparatus of claim 1 wherein the second ITO layer covers the optical device 22.
As to claim 4, figure 32T, the combined teaching of Lin and Jain discloses:
4. The apparatus of wherein the multi-layer stack 821 of electrically conductive materials forms an ohmic contact to the bond pad 600.
As to claim 5, figure 32T, the combined teaching of Lin and Jain discloses:
5. The apparatus of wherein the multi-layer stack of electrically conductive materials includes a conductive layer 8211 in direct contact with the bond pad 600, and a sub-stack of at least one diffusion barrier layer or adhesion layer 98 is in direct contact with the conductive layer, wherein the first ITO layer 82 is in direct contact with the sub-stack of at least one diffusion barrier layer or adhesion layer 98.
As to claim 6, figure 32T, the combined teaching of Lin and Jain discloses:
6. The apparatus of claim 1, wherein the multi-layer stack 821 comprises a titanium layer on an aluminum layer that is in direct contact with the bond pad, wherein the first ITO layer 82 is on the titanium layer 8211. NOTE, it is well settled that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. V. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960); Ritchie V. Vast Resources Inc. d/b/a Topco Sales, 90 USPQ2d 1668 (Fed. Cir. 2009); and MPEP § 2144.07.
As to claim 7, figure 32T, the combined teaching of Lin and Jain discloses:
7. The apparatus of the claim 1 wherein the optical device is an optical interference filter.
As to claim 12, figure 32T, the combined teaching of Lin and Jain discloses:
12. The apparatus of wherein the first and second ITO layers are integrated as part of a CMOS integrated circuit.
Allowable Subject Matter
Claims 9, 11 and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record taken alone or in combination fail to specifically teach or suggest an optical device is a photodetector and wherein the second ITO layer covers the photodetector, the apparatus further including: a second electrically conductive bond pad, a second multi-layer stack of different electrically conductive materials on the second electrically conductive bond pad, the second stack including a top layer comprising a first ITO layer, an electrode layer disposed on a side of the optical device opposite that of the second ITO layer and connected to the first ITO layer of the second stack, and optionally wherein the photodetector is an organic photodetector; wherein the electrode layer disposed on a side of the optical device opposite that of the second ITO layer is composed of a third ITO layer; and wherein the optical interference filter is disposed over a light detecting element in an integrated semiconductor circuit as set forth in the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takeda et al (US 2006/0046411) discloses a heterojunction bipolar transistor and manufacturing method thereof.
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/MICHAEL G LEE/Supervisory Patent Examiner, Art Unit 2876