Attorney Docket Number: QC2206916
Filing Date: 08/11/2022
Claimed Priority Date: none
Inventors: He et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the amendment filed on 12/11/2025.
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 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 12/11/2025 in reply to the previous Office action mailed on 09/12/2025 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 Accordingly, pending in this Office action are claims 1-7 and 9-40, with claims 5-6 and 11-40 remaining withdrawn from consideration.
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 following must be shown or the features canceled from the claims. No new matter should be entered.
“a first set of boosting pads”, as recited in claim 1
“a first set of conductive pillar bumps attached to the first set of boosting pads… attached to a first set of the plurality of metal pads”, as recited in claim 1
“a second set of conductive pillar bumps… attached to a second set of the plurality of metal pads”, as recited in claim 1
“solder attached to the first set of conductive pillar bumps and the second set of conductive pillar bumps”, as recited in claim 1
“a third set of conductive pillar bumps attached to a second set of boosting pads”, as recited in claim 4
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 of 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
Initially, and with respect to claim 1, note that a “product by process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe,
even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
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, 3-4, 7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Osenbach (US 2015/0262949) in view of Srinivas (US 2014/0061642).
Regarding claim 1, Osenbach (see, e.g., fig. 9) shows most aspects of the instant invention, including an apparatus comprising:
a plurality of metal pads 214;
an under bump metallization (UBM) layer 216, 218 attached to the plurality of metal pads;
a hard passivation layer deposited on the plurality of metal pads (see, e.g., par.0024/ll.15-19);
a first set of boosting pads 506 attached to a first portion of the UBM layer (the two leftmost 214, 216) attached to a first set of the plurality of metal pads (the two leftmost 214);
a first set of conductive pillar bumps 606 attached to the first set of boosting pads;
a second set of conductive pillar bumps 108N attached to a second portion of the UBM layer attached to a second set of the plurality of metal pads (the two rightmost 214); and
solder 110W/110N attached to the first set of conductive pillar bumps and the second set of conductive pillar bumps
wherein:
each conductive pillar bump 606 of the first set of conductive pillar bumps is attached to a single boosting pad 506 of the first set of boosting pads;
each conductive pillar bump 108N of the second set of conductive pillar bumps is attached to a single metal pad 214 of the second set of the second set of metal pads (the two rightmost 214);
heights of the first set of conductive pillar bumps 606 are shorter than heights of the second set of pillar bumps 108N; and
heights of the first set of boosting pads 506 plus the heights of the first set of conductive pillar bumps 606 are within a tolerance threshold of the heights of the second set of conductive pillar bumps 108N (see, e.g., par.0033/ll.25-27)
Regarding claim 1, Osenbach (see, e.g., fig. 9 and par.0024/ll.15-19) teaches that a hard passivation layer is deposited on Osenbach’s plurality of metal pads, wherein the plurality of metal pads is disposed on an underlying device 102. Osenbach (see, e.g., par.0024/ll.15-19) further teaches that such a passivation layer serves to protect the device from contaminants and physical damage.
Osenbach, however, fails to explicitly specify that Osenbach’s passivation layer is disposed between at least a portion of each of the plurality of pads and the UBM layer. Srinivas, in the same field of endeavor and in a similar device to Osenbach, teaches an apparatus 100 comprising a plurality of pads 108’ and 118’, an under bump metallization (UBM) layer 106/116 attached to the plurality of pads, and a hard passivation layer 110 deposited on the plurality of pads, wherein the passivation layer is disposed between at least a portion of each of the plurality of pads and the UBM layer (see, e.g., Srinivas: fig. 1 and par.0036/ll.7-10). Srinivas teaches that the particular arrangement of having a passivation layer disposed on a plurality of pads, wherein the passivation layer is disposed between at least a portion of each of the plurality of pads and a UBM layer, allows the passivation layer and the UBM layer to work together to provide environmental protection for the pads and an underlying device 152 by cooperating to seal various elements of the apparatus, thus protecting the device while simultaneously providing mechanical and electrical coupling to the pads (see, e.g., Srinivas: fig. 1 and par.0036).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Osenbach’s hard passivation layer disposed between at least a portion of each of Osenbach’s plurality of pads (which Osenbach already teaches are metal) and Osenbach’s UBM layer, as taught by Srinivas, in order to provide environmental protection for Osenbach’s underlying device and pads while simultaneously providing mechanical and electrical coupling to Osenbach’s pads.
Furthermore, it is noted that the language, term, or phrase “deposited”, is directed towards the process of establishing a hard passivation layer. 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 “a hard passivation layer deposited on the plurality of metal pads” only requires a hard passivation layer on a plurality of metal pads, which does not distinguish the invention from Osenbach/Srinivas, who teaches the structure as claimed.
Accordingly, it is noted that that Osenbach/Srinivas shows all structural aspects of the packaged device according to the claimed invention, and that the method steps of forming the metals balls through wire bonding are intermediate steps that do not affect the structure of the final device.
Regarding claim 3, Osenbach (see, e.g., fig. 9) shows that each boosting pad 506 of the first set of boosting pads comprises one or more steps.
Regarding claim 4, although Osenbach’s figures fail to specify that the apparatus comprises a third set of conductive pillar bumps attached to a second set of boosting pads, Osenbach’s methodology does not limit to only forming two conductive pillar bump/boosting pad structures (see, e.g., claim 1). Furthermore, Osenbach (see, e.g., pars.0022/ll.10-11 and 0030/ll.3-5) asserts that Osenbach’s illustrations are simplified, and that a typical apparatus would contain hundreds of such structures. Therefore, Osenbach discloses a third set of conductive pillar bumps attached to a second set of boosting pads, as the methodology used to create Osenbach’s two already-present first sets of conductive pillar bumps and boosting pads may be repeated, as permitted by Osenbach, to create at least another two-set of conductive pillar bumps and boosting pads, thereby forming a third set of conductive pillar bumps attached to a second set of boosting pads.
Regarding claim 7, Osenbach/Srinivas teaches all aspects of the claimed invention (see paragraph 9-13 above). Osenbach (see, e.g., par.0033/ll.25-27) further shows that the tolerance threshold is 4 microns or less (e.g., 0 microns).
Nevertheless, differences in height will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality (see next paragraph below) of the claimed tolerance threshold, i.e., less than 4 microns, it would have been obvious to one of ordinary skill in the art to use these values in the device of Osenbach/Srinivas.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed tolerance threshold (i.e., heights) or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 9, Osenbach (see, e.g., par.0032/ll.1-10 and claims 1-2) shows that the first set of boosting pads comprise one or more layers of copper (Cu).
Regarding claim 10, Osenbach (see, e.g., pars.0023/ll.1-2, par.0032/ll.1-10, and 0033/ll.5-9 and claims 1-2) shows that the first set of conductive pillar bumps and the second set of conductive pillar bumps comprise one or more layers of Cu.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Osenbach/Srinivas in view of Lin (2006/0051954).
Regarding claim 2, Osenbach/Srinivas shows most aspects of the instant invention (see paragraph 9-13 above). Osenbach, however, fails to specify that diameters of the first set of boosting pads are larger than diameters of the first set of conductive pillar bumps. Lin, in a similar device to Osenbach and in the same field of endeavor, teaches a first set of conductive pillar bumps 53 attached to a first set of boosting pads 51, wherein diameters of the first set of boosting pads are larger than diameters of the first set of conductive pillar bumps. Lin teaches that having such a recessed pillar structure helps increase spacing between conductive pillar bumps whilst simultaneously providing wider spaces for facilitating the filling of an underfill material between adjacent conductive pillar bumps, leading to the elimination of potential voids (see, e.g., Lin: pars.0017, 0028/ll.8-10, and par.0047/ll.7-12).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have diameters of Osenbach’s first set of boosting pads be larger than diameters of Osenbach’s first set of conductive pillar bumps, as taught by Lin, so as to increase spacing between Osenbach’s conductive pillar bumps while simultaneously providing wider spaces for facilitating filling an underfill material between adjacent conductive pillar bumps of Osenbach, leading to the elimination of potential voids (see, e.g., Osenbach: par.0045/ll.1-3).
Response to Arguments
With respect to the drawings, the applicant argues:
Regarding the objections to the drawings under 37 CFR 1.83(a) as put forth by the examiner in the previous Office action mailed on 09/12/2025, the Applicant submits that the corresponding components are clearly illustrated in figures 1-3. For example, the varying stages of fig. 3 illustrate various features that correspond to a “first set of boosting pads” as recited in claim 1, a “second set of boosting pads” as recited in claim 4, a “first set of conductive pillar bumps” as recited in claim 1, a “third set of conductive pillar bumps” as recited in claim 4, a “second set of conductive pillar bumps” as recited in claim 1, and “solder” as recited in claim 1. Furthermore, stage 310 of figure 3 illustrates multiple metal pads corresponding to a “first set of the plurality of metal pads” and a “second set of the plurality of metal pads” as recited in claim 1. Accordingly, the Applicant respectfully requests that these objections be withdrawn.
The Applicant’s arguments regarding the objections to the drawings under 37 CFR 1.83(a) put forth in the previous Office action mailed on 09/12/2025 are not found persuasive. CFR 1.83(a) explicitly states that “the drawing in a nonprovisional application must show every feature of the invention specified in the claims”. At present, the Applicant’s drawings do not comply with the statute.
The Applicant cites figure 3 as corresponding to various features of the claims, including a “first set of boosting pads”, as recited in claim 1, and a “second set of boosting pads”, as recited in claim 1. The Applicant further asserts that figure 3 corresponds to additional claimed features, such as a “first set of conductive pillar bumps” (claim 1), a “third set of conductive pillar bumps” (claim 4), and a “second set of conductive pillar bumps” (claim 1).
However, paragraph 12 and the first sentence of paragraph 31 of the Applicant’s published application US 2024/0055383 clearly state that figure 3 illustrates various stages of manufacturing pillar bumps with boosting pads, according to aspects of the disclosure. Accordingly, the “boosting pad” as shown in various stages of figure 3 are not “sets of boosting pads” in an apparatus, as claimed by the instant application, but instead the same “boosting pad” shown during various stages of manufacturing. That is, figure 3 represents the same “boosting pad” depicted at different stages of manufacture, rather than multiple “sets of boosting pads” as claimed by the instant application. Similarly, the “conductive pillar bumps” shown in the various stages of figure 3 are not “sets” of “conductive pillar bumps”, as the Applicant purports, but instead the same conductive pillar bumps during various stages of manufacturing. Therefore, the Applicant’s drawings do not illustrate the “sets of” or the “plurality of” first and second boosting pads and first, second, and third conductive pillar bumps in an apparatus as recited or necessitated by the claims. In a similar fashion, the Applicant’s drawings thereby fail to illustrates “solder attached to the first set of conductive pillar bumps and the second set of conductive pillar bumps”, as recited in claim 1.
Furthermore, it is noted that all dependent claims must inherit the features of the claim from which the dependent claim depends. As such, the “third set of conductive pillar bumps”, as recited in dependent claim 4, must be congruent with, and in addition to, the “first and second” sets of “conductive pillar bumps” as recited in parental claim 1. Accordingly, the Applicant’s assertion that the “Short bump” illustrated in figure 3 corresponds to both the “first set of conductive pillar bumps” as recited in claim 1 and the “third set of conductive pillar bumps” further comprised in claim 4 further demonstrates that the drawings fail to comply with 37 CFR 1.83(a), as instead an apparatus comprising a “first set of conductive pillar bumps” and further comprising a “third set of conductive pillar bumps” must be illustrated in order for the limitations in claim 4 to comply with 37 CFR 1.83(a). The comments regarding this issue are considered to be repeated for the “second set of boosting pads”, as recited in dependent claim 4.
Additionally, regarding the metal pads recited in claim 1, the Applicant argues that stage 310 of figure 3 illustrates multiple metal pads corresponding to a “first set of the plurality of metal pads” and a “second set of the plurality of metal pads”, which are claimed in claim 1 to be attached to various other features. However, stage 310 of figure 3 of the Applicant’s drawings only shows two metal pads in totality. As such, the Applicant’s drawings do not illustrate a “first set of the plurality of metal pads” and a “second set of the plurality of metal pads” as attached to a “first set of conductive pillar bumps attached to the first set of boosting pads” and a “second set of conductive pillar bumps”, respectively, since two metal pads in totality would themselves make up a single “plurality” or “set” to be attached, thereby leaving no metal pads to correspond to the other “set” or “plurality” of metal pads to be attached. Accordingly, as further continuation from above, the drawings fail to depict “a first set of conductive pillar bumps… attached to a first set of the plurality of metal pads” and “a second set of conductive pillar bumps… attached to a second set of the plurality of metal pads”, as recited in claim 1.
Therefore, for all the reasons listed above, the Applicant’s request to withdraw the drawings objections put forth in the previous Office action is denied. To further clarify the record and simplify the issues at hand, new drawing objections under 37 CFR 1.83(a) are set forth this Office action. The objection to the drawings will not be held in abeyance. Appropriate correction is required, and no new matter should be entered.
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant’s amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, this action is made final. See MPEP § 706.07(a). 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 Shamita Hanumasagar at (703) 756-1521 and between the hours of 7:00 AM to 5:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Shamita.Hanumasagar@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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/Shamita S. Hanumasagar/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814