DETAILED ACTION
This office action is in response to the election filed 12/1/2025.
Currently, claims 1-20 are pending. Of these, claims 19-20 have been withdrawn from consideration.
Election/Restrictions
Applicant's election with traverse of claims 1-18 is acknowledged. The traversal is on the ground(s) that all claims could be examined without a serious search and/or examination burden. This is not found persuasive because there are no specific arguments to support such allegation. Even so, there are features of the different inventions that are not necessarily applicable to both inventions, which differences might be claimed presently or at a different time in prosecution. Such differences lead to a significant examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “100” has been used to designate both the imaging chip and a surface pad in FIG. 14I and 14J. According to the specification, the surface pad should be 260 (see also e.g. FIG. 14H).
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. 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.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Imaging Element with Pad for Test Probe.
Furthermore, the disclosure is objected to because Fig. 8 is referenced in para. [0075], line 4, whereas it appears that Fig. 6 should instead be referenced.
Appropriate correction is required.
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 1-18 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.
Claim 1 recites the limitation “when the surfaces are bonded” in line 9, which is a conditional phrase. On the one hand, it appears to allow for a different scenario in which the surfaces are not bonded. On the other hand, there is a limitation “surfaces of the wiring regions of the two semiconductor chips being bonded together” in lines 6-7, which appears to allow only for the scenario that the surfaces are bonded. Thus, the limitation “when the surfaces are bonded” is unclear.
Furthermore, claim 1 recites the limitation “two of the plurality of semiconductor chips each including a first pad” in line 6, which implies there are multiple first pads. Meanwhile, claims 9-10 and 15 each recite the limitation “the first pad”. It is not clear whether this refers to one of the first pads from claim 1, or refers to all of the first pads from claim 1.
Similarly, claim 1 recites the limitation “at least one of the two semiconductor chips further including a second pad” in lines 9-10, allowing for one second pad or multiple second pads. It then becomes unclear to which second pad “the second pad” refers, as recited in claims 2, 6 and 8-14. Claim 14 in particular also recites the limitation “the other second pad”, which lacks antecedent basis in the claims. It is further unclear if “the other second pad” is one of the second pads recited in claim 1.
Finally and similar still, claim 7 recites the limitation “at least one of the plurality of semiconductor chips further includes a third pad for connecting to an external circuit.” It then becomes unclear to which third pad “the third pad” refers, as recited in claim 8.
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 1-2, 4, 7-10, 12-13 and 15-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ishii et al. (US 2020/0195916).
Pertaining to claim 1, Ishii shows, with reference to FIG. 12 and 14B, an imaging element, comprising:
a plurality of semiconductor chips (101, 102) each including a semiconductor substrate (para. [0133]) and a wiring region (comprising 130-X, 132, 321, 322), the semiconductor chips being bonded together (para. [0139]),
one of the plurality of semiconductor chips being disposed with a photoelectric conversion unit (110) that performs photoelectric conversion of incident light ([0071]),
two of the plurality of semiconductor chips each including a first pad (321, 322), surfaces of the wiring regions of the two semiconductor chips being bonded together (para. [0139], FIG. 14B), the first pads being disposed on the respective surfaces of the wiring regions and being joined to each other when the surfaces are bonded (para. [0139], FIG. 14B), at least one of the two semiconductor chips further including a second pad (130-1) disposed in the wiring region and an insulating film (301) disposed between the second pad and the surface for bonding (see FIG. 14A), the second pad being formed with a protrusion (310) toward the surface for bonding.
Pertaining to claim 2, Ishii shows the insulating film is formed to have a thickness to cover the second pad (FIG. 14A).
Pertaining to claim 4, Ishii shows the insulating film is formed of an insulating material (para. [0137]).
Pertaining to claim 7, Ishii shows at least one of the plurality of semiconductor chips further includes a third pad for connecting to an external circuit (either 221, or 132 which connects to the external circuit via 221 and intervening wirings).
Pertaining to claim 8, Ishii shows the third pad is disposed in a same layer as the second pad (when 132 is the third pad).
Pertaining to claims 9 and 10, Ishii shows the second pad (130-1) is formed to have a size larger than the first pad (FIG. 12).
Pertaining to claim 12, the limitation “formed by a needle contact test” is merely a product-by-process limitation that does not structurally distinguish the claimed invention over the prior art. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966. Even so, Ishii shows the second pad has the protrusion formed by a needle contact test (para. [0135]).
Pertaining to claim 13, Ishii shows the second pad has the protrusion formed in a recess (opening in layer 300) disposed on a side of the surface for bonding (FIG. 14A-B).
Pertaining to claim 15, Ishii shows the first pad is made of copper (para. [0138]).
Pertaining to claim 16, Ishii shows at least one of the plurality of semiconductor chips is disposed with a processing circuit for processing an image signal generated based on the photoelectric conversion (para. [0073]).
Pertaining to claim 17, Ishii shows two of the plurality of semiconductor chips are each disposed with the processing circuit and are bonded together (para. [0073]).
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 3, 5, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii.
Pertaining to claim 3, although Ishii does not explicitly disclose the claimed thickness of 650 nm or more, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, for the thickness of the insulating film to be 650 nm or more, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The thickness of the insulating film is determinative for the length (and therefore resistance) of the electrical path to the bonding surface, and is therefore result effective.
Note that the specification contains no disclosure of either the critical nature of the claimed dimensions or of any unexpected results arising there from. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in the claim, the Applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1515, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Pertaining to claim 5, Ishii shows the insulating material is an oxide (para. [0137]). Although Ishi does not specify the material as silicon oxide, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to try silicon oxide for the oxide material of Ishii, as the court has held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Pertaining to claim 14, Ishii teaches that inspection circuits, which comprise the second pad, may be formed in multiple substrates (para [0140]). In the case that the substrates are bonded front-to-front, as in the example embodiments, the second pads would face on another.
Pertaining to claim 18, although Ishii does not specify which side is the incident light side, the top surface of the overall structure shown in FIG. 12 is one of two possibilities (the other being the bottom surface). In such instances, the court has held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It is particularly more likely for the top surface to be the incident light side as the photodiode of 110 (labeled 110-1 in FIG. 1) is the light-receiving structure, and is located much closer to the top surface with no intervening elements besides a small thickness of the substrate. Thus, the path of incident light is much shorter when the top surface is the incident light side.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ishii in view of Nagata (US 2012/0298993, cited in IDS).
Ishii shows the imaging element of claim 1, but fails to show a protective metal film disposed on a surface of the second pad.
However, Nagata teaches in para. [0101] and FIG. 19 that, for a pad serving the same probe function as the second pad of Ishii, a metal protective film 12 is formed on a surface of the pad 11.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to include a metal protective film, as taught by Nagata, on a surface of the second pad of Ishii, with the motivation that the influence of the damage to the pad is decreased and the strength of the pad 11 is increased, allowing for improvement to yield and reliability of the device (para. [0102] – [0103]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ishii in view of Takahashi (US 2017/0033144, cited in IDS).
Ishii shows the imaging element of claim 1, but fails to show the material of the second pad is aluminum.
However, Takahashi teaches in para. [0134] that the material of a pad serving the same probe function as the second pad of Ishii is formed of aluminum.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to try aluminum, as taught by Takahashi, for the material of the second pad of Ishii, as the court has held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is prima facie obvious. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). Moreover, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fujii et al. (US 9,190,275) discloses an imaging element with pads that have peaks and valleys.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL M LUKE whose telephone number is (571)270-1569. The examiner can normally be reached Monday-Friday, 9am-5pm, EST.
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/DANIEL LUKE/Primary Examiner, Art Unit 2896