DETAILED ACTION
This office action is in response to amendment filed 6/9/2026.
Claims 1, 3-4, 6-12, 23-27, and 29-33 are pending. Claims 2, 5, 13-22, and 28 have been canceled. Claims 4, 10-11, and 25 have been withdrawn. Claims 1, 3, 6-8, 12, 23-24, 26-27, and 29-30 have been amended.
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, 3, 6-9, 12, 23-24, 26-27, and 29-33 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 pre-AIA the applicant regards as the invention.
Claims 1 and 23 reciting “a metal frame in the buildup layers around a periphery of a bottom of the cavity” renders the claim indefinite due to improper antecedent basis. It is unclear if “a bottom of the cavity” here is intended to be the same as or different from previously recited “a bottom of the cavity” in lines 5-6.
Other claims are rejected for depending on a rejected claim.
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 1-3, 5-10, 23-24, 28-29 and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karhade et al. US 2021/0391294 A1 (Karhade).
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In re claim 1, as best understood, Karhade discloses (e.g. FIG. 57) an electronic device comprising:
a substrate including a core layer (no specific “core layer” has been claimed that would distinguish over a lower layer of substrate 102; furthermore, substrate 102 may be cored, see FIG. 35, ¶ 68,87);
buildup layers 112 on a first (top) surface of the core layer (lower layer 112 or cored substrate), the buildup layers including first contact pads 180 below a top surface of the buildup layers and second contact pads 114 on the top surface of the buildup layers, the buildup layers 112 defining a cavity 120, the first contact pads 180 at a bottom of the cavity 120;
a discrete passive electronic component 110 (¶ 30) disposed in the cavity 120, the discrete passive electronic component 110 including bottom contact pads 182 on a bottom surface of the discrete passive electronic component 110 and top contact pads 118 on a top surface of the discrete passive electronic component 110; and
a metal frame (metal in N-4 layer) in the buildup layers around a periphery of “a bottom” of the cavity 120 (no specific “metal frame” structure has been claimed that would distinguish over the N-4 metal layer; in one interpretation, “around” is understood to mean “nearby”, and he N-4 metal layer is “around” or “nearby” the periphery of the bottom of the cavity; alternatively, “around” could mean “surround”, the portion of the N-4 metal layer in buildup layers 112 outside the cavity is “around” or “surrounds” the periphery of the bottom of the cavity in a plan view);
wherein the bottom contact pads 182 of the discrete passive electronic component 110 are bonded to the first contact pads 180 of the buildup layers and the top contact pads 118 of the discrete passive electronic component 110 are electrically connected to the second contact pads 114 (above 110) of the buildup layers.
In re claim 3, Karhade discloses (FIG. 57) wherein the cavity 120 includes an underfill material (not shown, underfill material between 110 and 102, ¶ 72,83) underfilling the discrete passive electronic component 110 and buildup material (top 112) encapsulating the discrete passive electronic component 110.
In re claim 6, Karhade discloses (FIG. 57) wherein the bottom contact pads 182 of the discrete passive electronic component 110 are bonded within the cavity 120 to the first contact pads 180 of the buildup layers using solder joints 106.
In re claim 7, Karhade discloses (e.g. FIG. 57) wherein at least one top contact pad 118 of the discrete passive electronic component 110 is electrically connected to a second contact pad 114 (above 110) of the second contact pads of the buildup layers using a via (vias above 118) formed in the buildup layers.
In re claim 8, Karhade discloses (e.g. FIG. 57) including an integrated circuit die (IC die) 130 that includes at least one active electronic component (¶ 33), wherein the IC die 130 is attached to the top surface of the buildup layers 112 and is bonded to at least one of the second contact pads 114 on the top surface of the buildup layers connected to the discrete passive electronic component 110 (¶ 33).
In re claim 9, Karhade discloses (e.g. FIG. 57) wherein the core layer (lower layer 112) is a glass core layer (glass, ¶ 28).
In re claim 23, as best understood, Karhade discloses (e.g. FIGs. 35 & 57) an electronic system, comprising:
a substrate (lower layer of 112 or cored substrate, see FIG. 35, ¶ 68,87) including a glass core layer 112 (glass, ¶ 28);
buildup layers 112 on a first (top) surface of the glass core layer, the buildup layers including first contact pads 180 below a top surface of the buildup layers and second contact pads 114 on a top surface of the buildup layers, the buildup layers 112 defining a cavity 120, the first contact pads 180 at a bottom of the cavity 120;
a dual-sided passive electronic component 110 embedded in the cavity 120, the dual-sided passive electronic component 110 including bottom contact pads 182 on a bottom surface of the dual-sided passive electronic component and top contact pads 118 on a top surface of the dual-sided passive electronic component; and
a metal frame (metal in N-4 layer) in the buildup layers around a periphery of “a bottom” of the cavity 120 (no specific “metal frame” structure has been claimed that would distinguish over the N-4 metal layer; in one interpretation, “around” is understood to mean “nearby”, and he N-4 metal layer is “around” or “nearby” the periphery of the bottom of the cavity; alternatively, “around” could mean “surround”, the portion of the N-4 metal layer in buildup layers 112 outside the cavity is “around” or “surrounds” the periphery of the bottom of the cavity in a plan view);
wherein the bottom contact pads 182 of the dual-sided passive electronic component are bonded to the first contact pads 180 of the buildup layers and the top contact pads 118 of the dual-sided passive electronic component are electrically connected to the second contact pads 114 (above 110) of the buildup layers.
In re claim 24, Karhade discloses (e.g. FIG. 57) including an integrated circuit die (IC die) 130 that includes at least one active electronic component (¶ 33), wherein the IC die 130 is attached to the top surface of the buildup layers 112 and is bonded to at least one of the second contact pads 114 on the top surface of the buildup layers connected to the dual-sided passive electronic component 110.
In re claim 26, Karhade discloses (e.g. FIG. 57) wherein the discrete passive electronic component 110 is below the top surface of the buildup layers 112.
In re claim 29, Karhade discloses (e.g. FIG. 57) wherein the metal frame (metal in N-2 layer) comprises a remaining portion of a metal laser ablation stop at the bottom of the cavity 120 (¶ 83).
In re claim 32, Karhade discloses (e.g. FIG. 35 & 57) further comprising backside buildup layers (lower layer 112) on a second (bottom) surface of the glass core layer (upper layer glass, ¶ 28).
In re claim 33, Karhade discloses (FIGs. 57 & 61) wherein the IC die 130 comprises a processor (¶ 114), and the electronic system further comprises a memory electrically conductively coupled to the processor (¶ 114).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Karhade as applied to claim 1 above, and further in view of Collins et al. US 2019/0206798 A1 (Collins).
In re claim 12, Karhade discloses the discrete passive electronic component 110 may be a passive component (¶ 30). Karhade does not explicitly disclose the passive component includes one or both of an inductor and a capacitor.
However, Collins discloses a device comprising a bridge die 120, wherein the bridge die is a passive device and include one or both of an inductor and a capacitor (¶ 65).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form Karhade’s passive discrete component 110 to include inductor and capacitor as taught by Collins to obtain the desired circuit function.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Karhade as applied to claim 3 above, and further in view of Rubin et al. US 2021/0134728 A1 (Rubin).
In re claim 27, Karhade discloses (e.g. FIG. 57) wherein the underfill material is disposed between the discrete passive electronic component 110 and the bottom of the cavity 120 (¶ 72,83). Karhade further additional build up layers are formed to enclose the discrete passive electronic component 110 within the cavity 120 (¶ 87), wherein the additional layer 112 defined the top surface of the buildup layers (see FIG. 57), and can be the organic material (¶ 28).
Karhade does not explicitly disclose the cavity 120 is filled with the organic buildup material.
However, Rubin discloses (e.g. FIGs. 4A-4B) an electronic device comprising a discrete component 110 enclosed in a cavity of the buildup layers, wherein an underfill material 400 underfills the discrete component 110 in the cavity, and an organic buildup material 332+342 (¶ 50,64,69,71) fills the cavity above the underfill material 400 to define the top surface of the buildup layers (332 fill the cavity and 342 defines the top surface).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form Karhade’s device by filling the cavity 120 with the organic buildup material to provide additional protection and support structure as taught by Rubin.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Karhade as applied to claim 28 above, and further in view of Ham et al. US 2022/0210921 A1 (Ham).
In re claim 30, Karhade discloses the claimed invention including the metal frame (metal in N-4 layer) around a periphery of a bottom of the cavity 120, wherein the metal frame is formed of the same material as the N-4 layer metal wiring in the buildup layers.
Karhade does not explicitly disclose the metal of the buildup layers comprise titanium.
However, Ham discloses (FIG. 3) an embedded bridge 200 in a cavity of the buildup layers, wherein the wiring layers of the buildup layers comprises titanium (¶ 72).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form Karhade’s metal wiring, and thus the metal frame, using titanium as taught by Ham as known material for wiring layers. 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, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Karhade as applied to claim 24 above, and further in view of Vaidya et al. US 2019/0006264 A1 (Vaidya).
In re claim 31, Karhade discloses the claimed the dual-sided passive electronic component. Karhade does not explicitly disclose using the dual-sided passive electronic component to form a voltage regulator circuit. However, intended function of the device claimed does not render the device structurally distinguishable over the prior art. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Furthermore, Vaidya discloses a package including embedded bridge (FIG. 9), wherein the bridge is part of a voltage regulator circuit (¶ 18).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ Karhade’s device in a voltage regular circuit to performed desired functions as taught by Vaidya.
Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
Applicant argues Karhade’s substrate 102 is coreless in FIG. 57. A core 178 is only shown in embodiment of FIG. 35. A lower layer of coreless dielectric body cannot teach “core layer” while the remainder of the dielectric 112 teach the buildup layers (Remark page 10).
This is not persuasive. Karhade specifically disclose “any of the substrates 102 disclosed herein may be cored substrates 102” (¶ 68) with an example of a cored substrate being shown in FIG. 35. Therefore, Karhade contains explicit teaching to replace “any of the substrate 102” disclosed with a cored substrate as specified in ¶ 68. As such, the substrate 102 can alternatively be a cored substrate as taught by Karhade. Furthermore, in an alternative interpretation, even if the substrate 102 is as shown in FIG. 57, its lower layer teaches claimed “core layer”. The substrate 102 is not a single dielectric body as argued by Applicant. Rather, substrate 102 contains layers of dielectric material 112 and conductive material 108 (¶ 28). As such, a lower layer of dielectric material 112 teaches the claimed “core layer”. A “core layer” is broadly understood to refer of a layer material. No specific “core layer” has otherwise been claimed that would structurally distinguish over a lower layer of dielectric material 112 of Karhade’s substrate 102.
Applicant further argues N-4 metal layer in Karhade is not a frame, and is not disposed around a periphery of a bottom of the cavity 120 (Remark, pages 10-11).
This is not persuasive. Firstly, “a bottom of the cavity” can refer to a bottom portion of the cavity which may encompass any space in the cavity 120 below the topmost portion. That is “a bottom of the cavity” does not need to be a bottommost surface of the cavity. Furthermore, the term “around” can be understood to mean “nearby” or “surround”. In one interpretation, any of Karhade’s N-4 metal layer, N-3 metal layer, or N-2 metal layer can be considered to be “around” or “nearby” a periphery of a “bottom” of the cavity. No specific proximity is required for “around”. Under the interpretation that “around” means “surrounding”, any of N-4 metal layer, N-3 metal layer, or N-2 metal layer can be considered to be “around” or “surrounding” a periphery of a “bottom” of the cavity. The N-4 metal layer, N-3 metal layer, and N-2 metal layer are formed on either side of the cavity as shown in FIG. 57 (see annotated below) and is thus considered to be “surrounding” a periphery of the cavity.
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For example, the portion of the N-4 metal layer in buildup layers 112 outside the cavity teaches the “metal frame” that is “around” or “surrounds” the periphery of the bottom of the cavity in a plan view. No specific “metal frame” structure has otherwise been claimed that would structurally distinguish over the N-2, N-3 or N-4 metal layers that are disposed “around” a periphery of a “bottom” of the cavity. Applicant’s disclosed “metal frame” (986 in FIG. 9) is similarly a portion of the metallization in the buildup layers around the cavity.
Applicant further argues Karhade only discloses a core layer in FIG. 35 which is not permitted to be combined with the embodiment in FIG. 57 for anticipation (Remark, pages 11-12).
This is not persuasive. Karhade specifically disclose “any of the substrates 102 disclosed herein may be cored substrates 102” (¶ 68) with an example of a cored substrate being shown in FIG. 35. Therefore, Karhade contains explicit teaching to replace “any of the substrate 102” disclosed with a cored substrate as specified in ¶ 68. As such, Karhade explicitly teaches the substrate 102 in the embodiment of FIG. 57 can alternatively be a cored substrate.
Applicant’s other arguments with secondary references in 35 USC 103 rejections (Remark, pages 12-18) are persuasive because these references are not relied upon for teaching the elements argued by Applicant.
Conclusion
Applicant's amendment necessitated the new ground(s) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YU CHEN whose telephone number is (571)270-7881. The examiner can normally be reached Monday-Friday: 9AM-5PM ET.
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/YU CHEN/Primary Examiner, Art Unit 2896
YU CHEN
Examiner
Art Unit 2896
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