Attorney Docket Number: 21-AG0518US01/812063.651
Filing Date: 09/09/2022
Claimed Priority Date: none
Inventors: Milanesi et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the election filed on 06/24/2025.
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.
Elections/Restrictions
Applicant’s election without traverse of Invention II, reading on a method of making a device, in the reply filed on 06/24/2025, is acknowledged. Furthermore, applicant’s election with traverse of the species reading on figures 2 and 7A and the larger second portion dimension described in par.0066/ll.7-9, in the reply filed on 06/24/2025, is acknowledged. The applicant indicated that claims 18-37 read on the elected species. Claims 27-29 and 33, however, read on a non-elected species of the claimed invention. For instance, claim 27 recites the limitation “the second opening extending through the sealing layer to the third surface of the conductive structure, [wherein] the second opening exposes the third surface from the conductive structure” and claim 28 recites the limitation “before forming the sealing layer, forming a second insulating layer on the first insulating layer”. However, these limitations are exclusive of, for example and non-exhaustively, the species reading on figure 3 and the species reading on figure 4, respectively. Accordingly, claims 27-29 and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention and/or species, there being no allowable generic or linking claim.
The traversal is on the grounds that claims 18-20 have been amended to be generic to all species. According to the applicants, there are claims reciting limitations of the species that depend from generic claims and, therefore, the restriction requirement should be reconsidered. This is found not persuasive. The argument about claims reading on the species depending from the same generic claims is not evidence that the species are not mutually exclusive. The examiner can require a restriction in applications where generic claims recite features that are common to a multiplicity of species.
In the previous restriction mailed on 04/24/2025 on pages 6-7, the examiner set forth that the application contained a multiplicity of species, each including mutually exclusive characteristics. These exclusive characteristics make the species patentably distinct from each other. That is, the unpatentability of one of the species would not necessarily imply the unpatentability of the other species. The applicants, on the other hand, have failed to advance reasons leading to the conclusion that the species claimed are considered clearly unpatentable over each other.
Accordingly, the prior art applicable to one of the species would not likely be applicable to the other species as the species are likely to raise different prior art issues. Since each of the species belongs to a different subject of inventive effort, they will require different fields of search (e.g., employing different search queries) that would allow separately searching for each of their mutually exclusive characteristics, thus creating a serious burden on the examiner. 3. For all the above reasons, the requirement is still deemed proper and is, therefore, made final.
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 claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 21 recites the limitation “the second surface of the conductive structure”. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation “the second surface”. Two distinct “second surfaces” are recited in preceding claim 21. As such, there is insufficient antecedent basis for this limitation in the claim.
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 18-20, 21, 30-32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 2017/0047242) in view of Hong (US 2008/0284006) and Lee (US 2023/0066861).
Regarding claim 18, Sun (see, e.g., figs. 2A-2C, 2H, 2J, 2L) shows most aspects of the instant invention, including a method comprising:
forming a first insulating layer 106X with an opening 120A and a substrate 104, 102;
forming a conductive structure 126/128 in the opening; and
forming a crevice 132 extending from a first sidewall of the first insulating layer 106X to a second sidewall of the conductive structure and extending to a surface
Although Sun shows most aspects of the instant invention, Sun fails to specify that Sun’s method includes the first insulating layer exposing a conductive layer at a surface of the substrate and that the conductive structure is formed on the surface of and coupled to the conductive layer. Furthermore, although Sun teaches that the crevice extends to a surface, Sun fails to specify that coupling the conductive structure to the conductive layer includes the crevice extending to the surface of a conductive layer.
Hong, in the same field of endeavor, teaches a similar method to Sun, wherein Hong forms a first insulating layer 118 with an opening 120a that exposes a surface of a conductive layer 113a at a surface of a substrate 108, 102, 110 (see, e.g., Hong: figs. 2A-2B and par.0063/ll.9-11). Hong further shows that a conductive structure 125 is coupled to the conductive layer 113a by forming the conductive structure in the opening 120a and on the surface of the conductive layer 113a (see, e.g., Hong: fig. 2B-2C and par.0063/ll.9-11). Hong teaches that the structure created by this method can reduce the effect of leakage current between conductive structures and alleviate design constraints (see, e.g., Hong: par.0067/ll.12-18).
Furthermore, Lee, in another similar method to Hong and Sun, teaches another conductive layer 312 formed at the surface of a substrate 310 (see, e.g., Lee: fig. 7A). Lee further teaches that coupling individual structures 314 to conductive layer 312 involves forming a crevice 334, wherein the conductive structure 314 only contacts a portion of the conductive layer 312 such that the crevice 334 is formed extending to the surface of the conductive layer 312 (see, e.g., Lee: fig. 6A-7A). Lee teaches that the structure formed by this method is suitable for providing electrical routing from the structure to other devices (see, e.g., Lee: pars.0022/ll.12-14 and 0024/ll.30-32).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify the method of Sun to incorporate forming a first insulating layer with an opening exposing a surface of a conductive layer at a surface of Sun’s substrate and coupling a conductive structure to a conductive layer by forming the conductive structure in the opening and on the surface of the conductive layer for at least one of Sun’s conductive structures, as taught by Han, so as to alleviate design constraints and reduce the effect of leakage current between Sun’s conductive structures. Furthermore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify the method of Sun to incorporate, in coupling the conductive structure to the conductive layer, the step of extending Sun’s crevice to the surface of the conductive layer, adding to Sun’s forming of a crevice extending from a first sidewall of the first insulating layer to a second sidewall of the conductive structure, so as to form an established suitable structure for electrical routing between Sun’s device and various other devices, as demonstrated by Lee, thereby expanding the external applications of Sun’s device using a recognized structure.
Regarding claim 21, Sun (see, e.g., figs. 2A-2C, 2H, 2J, 2L) shows most aspects of the instant invention, including a method comprising:
providing a substrate 104, 102 including a first surface;
forming a first insulating layer 106X on the first surface of the substrate, the first insulating layer having a first sidewall transverse to the first surface of the substrate;
forming a first opening 120A extending through the first insulating layer 106X, the first opening being adjacent to the first sidewall of the first insulating layer;
forming a conductive structure 126/128 in the first opening, the conductive structure including a second sidewall that faces the first sidewall and being spaced apart from the first sidewall of the insulating layer;
forming a crevice 132 between the first sidewall of the first insulating layer and the second sidewall of the conductive structure, the crevice extends along the first sidewall of the first insulating layer and the second sidewall of the conductive structure; and
forming a sealing layer 133 within the crevice and on the conductive structure to seal the conductive structure from an environment external to the crevice.
Although Sun shows most aspects of the instant invention, Sun fails to specify that a conductive layer is formed within the substrate, that the conductive layer includes a second surface exposed from the first surface of the substrate, that the first insulating layer has a first sidewall transverse to the second surface of the conductive layer, and that the conductive structure is formed on the second surface of and is coupled to the conductive layer. Furthermore, although Sun teaches that the crevice extends to a surface, Sun fails to specify that the crevice extends to a surface of a conductive layer.
Hong, in the same field of endeavor, teaches a similar method to Sun, wherein Hong forms a first conductive layer 113a within a substrate 108, 102, 100, wherein the conductive layer includes a second surface (top of 113a) exposed from the first surface of the substrate (top of 108, 102, 100) that runs transverse to a first sidewall of a first insulating layer 118 (see, e.g., Hong: figs. 2A-2C and par.0063/ll.9-11). Hong further shows that a first opening 120a extends through the first insulating layer 118 to the second surface of the conductive layer 113a, and that conductive structure 125 is coupled to the conductive layer 113a by forming the conductive structure in the first opening 120a and on the surface of the conductive layer 113a (see, e.g., Hong: fig. 2B-2C and par.0063/ll.9-11). Hong teaches that the structure created by this method can reduce the effect of leakage current between conductive structures and alleviate design constraints (see, e.g., Hong: par.0067/ll.12-18).
Furthermore, Lee, in another similar method to Hong and Sun, teaches another conductive layer 312 formed at the surface of a substrate 310 having a second surface exposed from a first surface of the substrate (see, e.g., Lee: fig. 7A). Lee further teaches a conductive structure 314 on top of the second surface of the conductive layer 312 and coupled to the conductive layer 312, wherein the conductive structure 314 only contacts a portion of the second surface of the conductive layer 312 such that a crevice 334 is formed extending to the second surface of the conductive layer 312 (see, e.g., Lee: fig. 7A). Lee teaches that the structure formed by this method is suitable for providing electrical routing from the structure to other devices (see, e.g., Lee: pars.0022/ll.12-14 and 0024/ll.30-32).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify the method of Sun to incorporate forming a conductive layer within Sun’s substrate such that the conductive layer includes a second surface exposed from the first surface of the substrate, wherein said second surface of the conductive layer runs transverse to a first sidewall of Sun’s first insulating layer, forming Sun’s first opening to extend the second surface of the conductive layer, and forming/coupling a conductive structure on the second surface of the conductive layer for at least one of Sun’s conductive structures, as taught by Han, so as to alleviate design constraints and reduce the effect of leakage current between Sun’s conductive structures. Furthermore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify the method of Sun to incorporate extending Sun’s crevice to the second surface of the conductive layer, so as to form an established suitable structure for electrical routing between Sun’s device and various other devices, as demonstrated by Lee, thereby expanding the external applications of Sun’s device using a recognized structure.
Regarding the claim limitation, “to seal the conductive structure from an environment external to the crevice”, recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See also MPEP § 2111.02 II.
Regarding claim 34, Sun (see, e.g., figs. 2A-2C, 2H, 2J, 2L) shows most aspects of the instant invention, including a method comprising:
providing a substrate 104, 102;
forming an insulating layer 106X;
forming an opening 120A in the insulating layer;
forming, in the opening, a conductive structure 126/128 including a first end 126, the conductive structure and the insulating layer being spaced apart from each other so that to form a gap 132 between the conductive structure and the insulating layer; and
forming a sealing layer 133 in the gap
Although Sun shows most aspects of the instant invention, Sun fails to specify that Sun’s method includes forming a first conductive layer in the substrate, the first conductive layer including a surface exposed from the substrate, forming an insulating layer on the first conductive layer, forming an opening in the insulating layer to expose a first portion of the first conductive layer, and coupling the conductive structure to the first conductive layer. Furthermore, although Sun teaches that the gap extends to a surface, Sun fails to specify that the gap exposes a second portion of a first conductive layer and that the sealing layer covers the second portion of the first conductive layer.
Hong, in the same field of endeavor, teaches a similar method to Sun, wherein Hong forms a first conductive layer 113a in a substrate 108, 102, 100, wherein the first conductive layer includes a surface (top of 113a) exposed from the substrate (top of 108, 102, 100) (see, e.g., Hong: figs. 2A-2C and par.0063/ll.9-11). Hong further shows that a first opening 120a extends through a first insulating layer 118, which was formed on the first conductive layer 113a, to expose a first portion of the conductive layer 113a (see, e.g., Hong: figs. 2A-2C and par.0063/ll.9-11). Hong additionally shows that a first end (bottom part of 125) of a conductive structure 125 is coupled to the conductive layer 113a by forming the conductive structure in a first opening 120a (see, e.g., Hong: fig. 2B-2C and par.0063/ll.9-11). Hong teaches that the structure created by this method can reduce the effect of leakage current between conductive structures and alleviate design constraints (see, e.g., Hong: par.0067/ll.12-18).
Furthermore, Lee, in another similar method to Hong and Sun, teaches another first conductive layer 312 formed in a substrate 310 having a surface exposed from the substrate (see, e.g., Lee: fig. 7A). Lee further teaches a conductive structure 314 having a first end 320 coupled to the first conductive layer 312, wherein the first end 320 of conductive structure 314 only contacts a portion of the first conductive layer 312 such that a gap 334 exposes a second portion of the first conductive layer 312 (see, e.g., Lee: fig. 7A). Lee then teaches forming a sealing layer 336 in the gap 334 to cover the second portion of the first conductive layer 312 (see, e.g., Lee: fig. 8A). Lee teaches that the structure formed by this method is suitable for providing electrical routing from the structure to other devices (see, e.g., Lee: pars.0022/ll.12-14 and 0024/ll.30-32).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify the method of Sun to incorporate forming a first conductive layer in Sun’s substrate, such that the first conductive layer includes a surface exposed from the substrate, forming Sun’s insulating layer on the first conductive layer, forming the opening in Sun’s insulating layer to expose a first portion of the first conductive layer, and coupling the first end of Sun’s conductive structure to the first conductive layer, as taught by Han, so as to alleviate design constraints and reduce the effect of leakage current between Sun’s conductive structures. Furthermore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify the method of Sun to incorporate having Sun’s gap expose a second portion of the conductive layer, and form a sealing layer in the gap to cover the second portion of the first conductive layer, so as to form an established suitable structure for electrical routing between Sun’s device and various other devices, as demonstrated by Lee, thereby expanding the external applications of Sun’s device using a recognized structure.
Regarding claim 19, Sun (see, e.g., fig. 2J) shows sealing the surface of the conductive layer 126/128 from the crevice 132 by forming a sealing layer 133 in the crevice and on the surface of the conductive layer separating the crevice from the surface of the conductive layer.
Regarding claim 20, Sun (see, e.g., fig. 2J) shows that forming the sealing layer 133 further comprises forming the sealing layer on the first sidewall of the first insulating layer 106X and on the second sidewall of the conductive structure 126/128.
Regarding claim 30, Sun (see, e.g., fig. 2L) shows that:
the first insulating layer 106X includes a third surface that faces away from the first surface of the substrate 104, 102;
the sealing layer 133 is on the third surface of the first insulating layer;
the sealing layer includes a fourth surface that faces away from the third surface of the first insulating layer
Regarding claim 31, Sun (see, e.g., fig. 2L) shows forming a second insulating layer 134 on the fourth surface of the sealing layer 133.
Regarding claim 32, Sun (see, e.g., fig. 2L) shows that the sealing layer 133 is between the first insulating layer 106X and the second insulating layer 134 and separates the first insulating layer from the second insulating layer.
Claims 22-26 and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Sun/Hong/Lee in view of Tonegawa (US 2017/0092605) .
Regarding claim 22, Sun/Hong/Lee teach most aspects of the instant invention (see paragraphs 17-22 above). Sun (see, e.g., fig. 2F and par.0035) teaches that forming the conductive structure 126/128 further includes:
forming a first portion 126; and
forming a second portion 128 that extends from the first portion in a second direction, the second portion including a third surface that faces away from the first surface of the substrate 104, 102 and the second surface of the conductive layer (see, e.g., the second surface orientation in Hong: fig. 2C and par.0063/ll.9-11)
Although Sun/Hong/Lee teaches most aspects of the instant invention, Sun/Hong/Lee fails to show that a second portion of the conductive structure extends from the first portion in a second direction transverse to the first portion. Tonegawa, in a similar method to Sun/Hong/Lee and in the same field of endeavor, teaches a conductive structure OPM1/OPM2 having a first portion OPM1 and a second portion OPM2, wherein the second portion extends from the first portion in a second direction transverse to the first portion (see, e.g., Tonegawa: figs. 25-26).
Tonegawa is evidence showing that one of ordinary skill in the art would have appreciated that having a second portion of a conductive structure extending from a first portion in a second direction transverse to the first portion would have been equivalent to having a first portion and second portion of a conductive structure formed without the second portion extending in a second direction transverse to the first portion. That is, the first and second portions of both Sun/Hong/Lee and Tonegawa would yield the predictable result of forming a two-layered conductive connecting structure capable of electrical connection in a device.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to form a second portion of a conductive structure extending in a second direction transverse to the a first portion, as taught by Tonegawa, or to form a second portion of a conductive structure stacked above a first portion, as taught by Sun/Hong/Lee, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of forming a two-layered conductive connecting structure capable of electrical connection in a device. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Regarding claim 23, Sun (see, e.g., fig. 2H and pars.0034/ll.1-2 and 0035/ll.3) shows that the first portion 126 of the conductive structure is made of a first conductive material, the second portion of the conductive structure 128 is made of a second conductive material, the third surface being defined on the second conductive material.
Regarding claim 24, although Sun (see, e.g., pars.0034/ll.1-2 and 0035/ll.3) teaches that the first conductive material and second conductive material may be different conductive materials, Sun fails to specify that the materials comprise nickel and palladium, respectively. Tonegawa, in a similar device to Sun, teaches nickel and palladium to be among suitable materials for first and second conductive materials of respective first OPM1 and second OPM2 conductive structures (see, e.g., Tonegawa: fig. 25 and par.0129/ll.3-6).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have the first and second conductive materials comprise nickel and palladium respectively, as taught by Tonegawa, or to be any other suitable conductive material, as these materials were recognized in the semiconductor art as equivalents and either structure would yield the predictable result of forming a two-layered conductive structure capable of electrical connection in a device.
Regarding claim 25, Sun (see, e.g., fig. 2J) shows that the sealing layer 133 is on the third surface of the conductive structure 126/128.
Regarding claim 26, Sun (see, e.g., fig. 2J) shows that the sealing layer 133 completely covers the third surface of the conductive structure 126/128.
Regarding claim 35, Sun/Hong/Lee teaches most aspects of the instant invention (see paragraphs 23-27 above). Sun (see, e.g., fig. 2H) shows that forming the conductive structure comprises forming a first region 126 directly on the first conductive layer (see the conductive structure/layer orientation in, e.g., Hong: fig. 2B and par.0063/ll.9-11). Sun (see, e.g., fig. 2H) also shows forming a second region directly on a first region 126. Sun, however, fails to specify that the materials comprise nickel and palladium, respectively. Tonegawa, in a similar device to Sun, teaches nickel and palladium to be among suitable materials for the first and second conductive materials of respective first OPM1 and second OPM2 conductive structures (see, e.g., Tonegawa: fig. 28 par.0129/ll.3-6). See the comments stated above in paragraphs 39-40 with respect to claim 24, which are considered to be repeated here.
Regarding claim 36, Sun (see, e.g., par.0026/ll.11-15) shows that the first 126 and second 128 regions are formed by electroless deposition.
Regarding claim 37, although Sun (see, e.g., par.0037/ll.10-12) teaches that additional conductive structures may be formed above the conductive structure 126/128, Sun fails to specify that a wire may be bonded to the second region of the conductive structure. Tonegawa, in a similar device to Sun, teaches a method of bonding a wire BW to a second region OPM2 (see, e.g., Tonegawa: pars.0133/ll.8-10 and 0134). Tonegawa further teaches that bonding a wire can couple a device to an external terminal (see, e.g., Tonegawa: par.0003/ll.7-8).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify Sun’s method to include bonding a wire to the second region of Sun’s conductive structure, as taught by Tonegawa, so as to expand the external applications of Sun’s device.
Conclusion
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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