DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election of invention Group I, Species V (FIGs. 9 & 11), and Subspecies A (FIG. 13) in the reply filed on 12/31/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant alleges claims 1-3, 5-12, 23-24, and 26-33 are pertinent to the elections made. However, upon further consideration, claims 10-11 are directed to non-elected Species and Subspecies. More specifically, claims 10 reciting “through glass vias (TGVs) formed in the core layer” pertains to features of non-elected Species I and IV as shown in FIG. 3J and FIG. 6 or Subspecies B and C as shown in FIGs. 14 and 15, respectively. Claim 11 reciting “the IC die is attached to the second buildup layers, wherein at least one of the TGVs provides electrical continuity between the discrete component and the IC die” pertains to features of non-elected Subspecies B and C as shown in FIGs. 14 and 15, respectively.
Therefore, claims 10-11 are withdrawn for reciting features of non-elected species.
Claims 4, 10-11 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/2025.
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, 5-9, 12, 23-24 and 26-33 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.
Claim 1 reciting “a discrete passive electronic component (discrete component)” renders the claim indefinite. While use of parentheses is for reference characters is permissible in claim, the recitation to “discrete component” in parentheses in claim 1 renders the scope of the claim indefinite. The phrase “discrete component” is not a simple reference character. The breadth of “discrete component” and “discrete passive electronic component” is not identical, thereby rendering the intended claim scope unclear. In fact, the scope of “discrete component” is broader than “discrete passive electronic component”. It is unclear if “(discrete component)” is intended to the same as “discrete passive electronic component”. Furthermore, it is unclear if subsequent recitation to “discrete component” require “discrete passive electronic component” or would any “discrete component” suffice? A broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 7 reciting “a second contact pad” renders the claim indefinite due to improper antecedent basis. It is unclear if “a second contact pad” is intended to refer to one of the “second contact pads” previously recited in claim 1.
Claim 23 reciting “a dual-sided passive electronic component (dual-sided component)” renders the claim indefinite for reasons similar as claim 1 above. More specifically, the phrase “dual-sided component” is not a simple reference character. The breadth of “dual-sided component” and “a dual-sided passive electronic component” is not identical, thereby rendering the intended claim scope unclear. The scope of “dual-sided component” is broader than “dual-sided passive electronic component”. It is unclear if “(dual-sided component)” is intended to the same as “dual-sided passive electronic component”. Furthermore, it is unclear if subsequent recitation to “dual-sided component” requires a “dual-sided passive electronic component” or would any “dual-sided component” suffice?
Claim 27 reciting “the underfill material is disposed between the discrete component and the first contact pads” renders the claim indefinite. Applicant’s FIG. 9 shows underfill material 984 is provided between the discrete component 906 and an underlying buildup layer 910. Bottom contact 958 pads are provided between the discrete component 906 and the first contact pads 918. The first contact pads 918 and the bottom contact pads 958 are surrounded by the underfill material 984. However, the underfill material 984 is not present between the discrete component 906 and the first contact pads 918. Therefore, it is unclear what is meant by “between the discrete component and the first contact pads” as recited in claim 27.
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; and
“a discrete passive electronic component (discrete component)” 110 (¶ 30) disposed in the buildup layers, the “discrete component” 110 including bottom contact pads 182 on a bottom surface of the “discrete component” 110 and top contact pads 118 on a top surface of the “discrete component” 110;
wherein the bottom contact pads 182 of the “discrete component” 110 are bonded to the first contact pads 180 of the buildup layers and the top contact pads 118 of the “discrete component” 110 are electrically connected to the second contact pads 114 (above 110) of the buildup layers.
In re claim 2, Karhade discloses (e.g. FIG. 57) including:
a cavity 120 formed in the buildup layers,
wherein the first contact pads 180 of the buildup layers are located at a bottom of the cavity 120 and the “discrete component” 110 is disposed in the cavity 120.
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 component” 110 and buildup material (top 112) encapsulating the “discrete component” 110.
In re claim 5, Karhade discloses (FIG. 57) including a metal frame (metal in N-4 layer) formed in the buildup layers around the cavity 120.
In re claim 6, Karhade discloses (FIG. 57) wherein the bottom contact pads 182 of the “discrete 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 component” 110 is electrically connected to “a second contact pad” 114 (above 110) 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 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 10, Karhade discloses (e.g. FIG. 35, 102 being a cored substrate) including:
through glass vias (TGVs) formed in the core layer (conductive pathways, not shown, ¶ 68); and
second buildup layers 112 formed on a second (bottom) surface of the core layer 178, wherein the buildup layers 112 on the first (top) surface of the core layer 178 are electrically connected to the second buildup layers 112 by the TGVs.
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; and
“a dual-sided passive electronic component (dual-sided component)” 110 embedded in the buildup layers, “the dual-sided component” 110 including bottom contact pads 182 on a bottom surface of “the dual-sided component” and top contact pads 118 on a top surface of “the dual-sided component”;
wherein the bottom contact pads 182 of “the dual-sided component” are bonded to the first contact pads 180 of the buildup layers and the top contact pads 118 of “the dual-sided 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 component” 110.
In re claim 26, Karhade discloses (e.g. FIG. 57) wherein “the discrete component” 110 is below the top surface of the buildup layers 112.
In re claim 28, Karhade discloses (e.g. FIG. 57) wherein the metal frame (metal in N-4 layer) is around a periphery of a bottom of the cavity 120.
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 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, as best understood, Karhade discloses (e.g. FIG. 57) wherein “the underfill material is disposed between the discrete component 110 and the first contact pads 180” (as best understood, underfill material between 110 and 102, ¶ 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 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.
Conclusion
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