Attorney’s Docket Number: JK-038-1D
Filing Date: 4/20/2022
Claimed Priority Date: 5/24/2019 (US 16/422,771)
Inventors: Chung et al.
Examiner: Marcos D. Pizarro
DETAILED ACTION
This Office action responds to the amendment filed on 10/9/2025.
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 . In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for a rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Amendment Status
The amendment filed on 10/9/2025 has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 1-20.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second portion 132b bending laterally back towards the second bond structure 136, as it is recited in claim 13, must be shown or the features canceled from the claim. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered, and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-6, 8, 10, 11 and 17-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement.
The claims lack enablement because they contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims recite a wire loop whose maximum height is located at a position other than the center of the die or proximate to a substrate pad, and that a first portion of the wire is located closer to the second edge of the die than to the first edge. Thus, the claims require specific spatial and geometric relationships, not merely a generic wire loop. While the drawings may appear to show such configurations (see, e.g., fig. 4), the specification as originally filed fails to describe how to achieve these configurations, and does not disclose any bonding parameter, fabrication methods, or techniques for positioning the wire loop or first wire portion as claimed.
In accordance with the factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), the determination of undue experimentation involves consideration of the following factors.
Wands Factors
Quantity of Experimentation Necessary: A significant amount of trial-and-error may be needed to achieve a wire loop profile where apex is not centered over the die or closer to a substrate pad, or to ensure that a particular portion of the wire lies closer to one edge than another. The specification does not provide sufficient guidance to minimize or direct this experimentation. A person of ordinary skill in the art (POSITA) would need to perform extensive iterative experimentation to adjust bonding parameters, measure resulting wire geometries, and determine whether claimed positional relationships are achieved
Amount of Direction or Guidance Provided: The specification provides general descriptions of wire bonding using a capillary tool and identification of bond types (ball, compression, stitch). See ¶s 0058 and 0062. The specification, however, provides no direction regarding how the off-center maximum height, the maximum height proximity to a substrate pad, or the wire proximity to the edge may be implemented. It provides no guidance as to which parameters control these claimed geometric features. This lack of disclosure forces the skilled artisan to independently determine how to create such a wire profile.
Presence or Absence of Working Examples: There are no working examples in the specification showing how to design or fabricate a wire loop with these characteristics. Figures may visually suggest the features, but these are not labeled, described, or associated with any disclosed technique in the specification.
Nature of the Invention: The invention is directed to methods of manufacturing a semiconductor package including wire bonding used to shield electromagnetic interference to or from dies in the package, an area that requires precision engineering. Small deviations in loop geometry can affect electromagnetic and mechanical reliability, increasing the complexity of implementation.
State of the Prior Art: While wire bonding is a well-known technology, the predictability of general bonding does not extend to the specific claimed geometries. The specific techniques to precisely control the apex of a wire loop and precisely control edge proximity are not widely disclosed in the prior art, and the specification does not incorporate or reference such techniques.
Relative Skill in the Art: A person of ordinary skill in the art of semiconductor packaging is presumed to have technical competence. However, even skilled artisans would need specific bonding parameters or loop profile guidance to reproduce the claimed features reliably.
Predictability or Unpredictability of the Art: Wire bonding includes numerous interacting variables including capillary motion, wire tension, bonding force and timing. These affect loop geometry in complex ways. Although wire bonding is partially predictable in the semiconductor art, the detailed control of loop height and position, especially to meet specific spatial constraints, can be unpredictable in the absence of defined manufacturing parameters.
Breadth of the Claims: The claims cover any configuration meeting the recited spatial relationships without limitation on specific bonding parameters and structural constraints. The claim language is relatively broad, and it is not limited to a specific die size, bonding machine, loop profile algorithm, or pad locations in the substrate. This breath weighs in favor of undue experimentation.
As stated in MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 1382–83, 103 USPQ2d 1769 (Fed. Cir. 2012), “The enablement doctrine’s prevention of over broad claims ensures that the patent system preserves necessary incentives for follow-on or improvement inventions.”
In the absence of disclosure about how to fabricate a wire having its maximum height located off-center or proximate a substrate pad, or a first portion located closer to a particular die edge, and considering the above Wands factors, the specification does not enable the full scope of the claims without undue experimentation. Applicant’s argument that wire bonding is “mature and predictable” is not persuasive because the claims are directed to specific geometric results and the specification does not teach how to achieve those results.
Therefore, the claims are not supported by an enabling disclosure, as required by 35 U.S.C. § 112(a).
Claims 1-6, 8, 10, 11 and 17-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claims fail to comply because they contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
As set forth in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 94 USPQ2d 1161 (Fed. Cir. 2010) (en banc), the specification must reasonably convey to a POSITA that the inventor had possession of the claimed invention. Additionally, in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64, 19 USPQ2d 1111 (Fed. Cir. 1991), drawings may satisfy written description only if they clearly convey the claimed subject matter.
The claims recite a wire loop whose maximum height is located at a position other than the center of the die or proximate to a substrate pad, and a first portion of the wire which is to be located closer to the second edge of the die than to the first edge. However, the specification, as originally filed, fails to convey to the skilled artisan that the inventor had possession of these aspects of the invention at the time of filing.
Although figures (see, e.g., fig. 4) in the application may visually suggest wire geometries in which the loop apex if off-center or proximate to a substrate pad, or the wire is positioned nearer to one edge of the die, there is no express disclosure, discussion, or labeling of these features. The figures are not referenced in the specification in a way that indicates the spatial location of the wire apex or the comparative distance between the wire portion and the edges of the die.
According to the Federal Circuit, drawings alone may not provide a written description of an invention where the drawings fail to show all the claimed limitations and where there is no discussion of the particular features shown in the drawings. Lockwood v. Am. Airlines, Inc. 107 F.3d 1565, 1572 (Fed. Cir. 1997). The written description requirement demands that the specification clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed. Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
In the present case, there is no indication in the written description that the inventor appreciated or intended to claim the specific spatial relationships now recited in the claims, i.e., the displaced apex of the wire loop or the proximity of the wire portion to one edge over the other. The specification fails to provide a written description these features.
The applicant relies on figures (e.g., figs. 2C, 3A–3D, 4) to show that the specification provides a written description of these geometric features. However, the figures are not labeled to indicate apex location relative to center, relative edge proximity of the wires, and wire proximity to conductive structures. Any apparent positioning is not described in the specification and may be incidental rather than intentional. Thus, the drawings do not clearly convey possession of the claimed limitations.
Therefore, the claims fail to comply with the written description requirement under 35 U.S.C. § 112(a) because they contain limitations that were not described or identified in the originally filed specification.
Allowable Subject Matter
Claims 7, 9 and 12-16 are allowed.
Response to Arguments
The applicants argue:
To achieve the claimed wire shape, POSITA could use a bonding tool with a capillary, a wire clamp and a wire spool to provide three different types of wire bonds including ball bond, compression bond and stitch bond. POSITA would understand that a capillary tool is a standard tool in the art that allows for precise control of the wire loop shapes as depicted in the drawings. With the details in ¶s0056-0067 including the description of the compression bond together with figs. 2c, 3A-3D and 4, POSITA would know how to adjust the bonding tool settings to achieve the continuous claimed wire shape without undue experimentation.
The examiner responds:
Even if capillary bonding equipment is well known, applicant has not shown that the mere availability of a standard tool, by itself, teaches or enables the specific claimed loop geometry, such as an off-center apex or the claimed positional relationships of the wire portions. The specification and remarks describe the capillary, wire clamp, and wire spool in general terms, and further describe different bond types including ball, compression, and stitch bonds, but those teachings relate principally to how the wire is terminated at the pads and how the intermediate connections are formed, not how the intermediate loop geometry is specifically controlled to place the apex at a particular non-central location.
In other words, applicant’s argument conflates the known ability to form wire bonds at the ends of a wire with the separate and distinct question of how to achieve the claimed loop profile between those bonds. The “bond” portions discussed by applicant are the terminal bond structures at the pads, whereas the claims require specific geometric features of the wire span itself. Applicant has not identified any disclosure that correlates particular capillary settings, bond parameters, or process adjustments with the claimed off-center apex or other claimed spatial limitations. A general statement that POSITA can “adjust the bonding tool settings” is conclusory and does not provide the necessary teaching that would allow POSITA to reliably achieve the claimed wire shape without undue experimentation.
Accordingly, the argument does not cure the enablement deficiency because it shows, at most, that POSITA could generally form wire bonds and wire loops, not that the inventor disclosed how to produce the specific claimed loop geometry across the full scope of the claims.
The applicants argue:
Adjusting the loop height and apex location is within the routine skill of POSITA, as wire bonding equipment allows for programmable control of loop profiles. Once POSITA is exposed to the novel wire shapes claimed, POSITA would know how to achieve the wire shapes.
The examiner responds:
While it is acknowledged that modern wire bonding equipment permits programmable control over general loop formation, the issue under 35 U.S.C. §112(a) is not whether POSITA can form some loop or adjust loop height in a general sense, but whether the specification teaches how to achieve the specific claimed geometric relationships without undue experimentation. The claims require particular spatial configurations, such as an apex located at a non-central position relative to an electronic device and specific positional relationships relative to edges of the device or conductive structures. However, the specification does not disclose which programmable parameters control apex lateral displacement, as opposed to overall loop height, how those parameters interact to produce the claimed off-center apex, or any guidance linking machine settings to the claimed positional relationships. Applicant’s argument that POSITA, once “exposed to the novel wire shapes,” would know how to achieve them, effectively relies on reverse engineering from the claimed result. Such reasoning is improper because enablement must come from the disclosure itself, not from knowledge of the claimed outcome. A statement that a skilled artisan could adjust parameters until the claimed geometry is achieved amounts to an invitation to engage in trial-and-error experimentation, rather than a teaching of how to practice the invention.
Furthermore, while loop height may be a commonly controlled parameter, apex location relative to a device, e.g., off-center positioning, involves additional degrees of freedom, including lateral trajectory, timing, and tension interactions, none of which are described in the specification in a manner that would allow POSITA to reliably and predictably achieve the claimed configuration.
Accordingly, the argument demonstrates, at most, that POSITA has tools capable of forming wire loops, but does not establish that the specification provides sufficient guidance to achieve the claimed loop geometry without undue experimentation.
The applicant argues:
The figures clearly show and support the claimed wire shape. We were not willy-nilly in the illustration of the wire shapes but were very consistent throughout the figures in illustrating the novel shape in the cross-sectional and perspective views. This consistency by itself is sufficient for POSITA to conclude that the inventors were in possession of the claimed subject matter.
The examiner responds:
While drawings can, in certain circumstances, satisfy the written description requirement, they must clearly convey to POSITA that the inventor had possession of the specific claimed subject matter, not merely depict a general embodiment. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64, 19 USPQ2d 1111 (Fed. Cir. 1991). Here, the issue is not whether the figures depict a wire loop, but whether they reasonably convey the particular claimed spatial relationships, such as an apex located at a position other than the center of an electronic device, a wire portion being closer to one edge than another, and an apex located proximate to a conductive structure.
The figures relied upon by applicant are not annotated, described, or otherwise identified in the specification as illustrating these specific positional limitations. Any apparent asymmetry or positioning in the drawings is not accompanied by a description indicating that such positioning is intentional, critical, or even recognized as part of the invention. As such, POSITA would not reasonably conclude that the inventor was in possession of these particular geometric relationships, but rather would view the drawings as illustrative depictions of a general wire configuration.
Applicant’s argument that the figures are “consistent” does not cure this deficiency. Consistency in illustration does not, by itself, demonstrate possession of a specific feature unless the feature is clearly identified and described as part of the invention. Without such identification, the consistency may simply reflect the use of similar drafting conventions across figures, rather than a deliberate disclosure of the claimed limitations.
Moreover, the written description requirement is not satisfied by what POSITA might infer or reconstruct from the drawings after reviewing the claims. Rather, the specification must itself convey that the inventor had possession of the claimed invention at the time of filing. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 94 USPQ2d 1161 (Fed. Cir. 2010) (en banc).
Accordingly, the figures do not provide adequate written description support for the claimed positional relationships, and the rejection is maintained.
Conclusion
This action is made final. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire three months from the mailing date of this action. In the event a first reply is filed within two months of the mailing date of this final action and the advisory action is not mailed until after the end of the three-month shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than six months from the mailing date of this final action.
Papers related to this application may be submitted directly to Art Unit 2814 by facsimile transmission. Papers should be faxed to Art Unit 2814 via the Art Unit 2814 Fax Center. The faxing of such papers must conform to the notice published in the Official Gazette, 1096 OG 30 (15 November 1989). The Art Unit 2814 Fax Center number is (571) 273-8300. The Art Unit 2814 Fax Center is to be used only for papers related to Art Unit 2814 applications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marcos D. Pizarro at (571) 272-1716 and between the hours of 9:00 AM to 7:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Marcos.Pizarro@uspto.gov. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy, can be reached on (571) 272-1705.
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/Marcos D. Pizarro/Primary Examiner, Art Unit 2814
MDP/mdp
March 24, 2026