Attorney Docket Number: T101857US01
Filing Date: 12/20/2022
Claimed Priority Date: none
Inventors: Molina et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the election filed on 10/13/2025.
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 with traverse of Species 2, reading on figure 5, in the reply filed on 10/13/2025, is acknowledged. The traversal is on the grounds that the species delineation between species citing figure 5 of the instant application should be reconsidered. This is found partially persuasive. The traversal is further on the grounds that a valid restriction must be based on claims, not figures, and that there is no burden to the examiner. This is not found persuasive.
As the applicant has explicitly stated on page 3 of applicant’s “Response to Election / Restriction Filed”, filed on 10/13/2025, that figure 5 illustrates the embodiments of figures 2A-2B, the applicant’s arguments regarding the species demarcation between species 2 and 3 (i.e., between figures 2A-2B, with respect to figure 5, and figure 5) is found persuasive. Accordingly, the restriction requirement mailed on 08/13/2025 is partially withdrawn. Specifically, the election requirement between figure 5 and between figures 2A-2B, with respect to figure 5, is withdrawn.
However, on pages 2-3 of the restriction requirement, the examiner set forth that the application contained various other species (i.e., species 1 and 4-10) corresponding to figures 1A-1B, 3A-3B, 4A-4B, 5, and/or 6, each including mutually exclusive characteristics, which make them patentably distinct from each other. That is, the unpatentability of one of the species would not necessarily imply the unpatentability of the other species. See, for example, that the instant application states that the mutually exclusive characteristics of figures 3A-3B or 4A-4B may be implemented into figures such as figure 5 (see, e.g., page 3 of the restriction requirement and par.0048 of the instant application), although figure 5 itself fails to explicitly illustrate such combinations. On the other hand, such an election of species should not be required if the species are considered clearly unpatentable (obvious) over each other or if there is an express admission by the applicants to that effect. In re Lee, 199 USPQ 108 (Comm' r Pat. 1978). 4. The applicants have failed to advance reasons leading to the conclusion that the remaining species corresponding to the figures are considered clearly unpatentable over each other. As the examiner indicated, the species are independent or distinct because they do not overlap in scope and are not obvious variants of each other making them patentably distinct from 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 remaining 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.
Additionally, it is noted that species always refer to different embodiments of the invention, and claims themselves are never species (see MPEP § 806.04(e)). Furthermore, it is the practice of the Office to identify such differing embodiments (i.e., species) by figures, and it is in only in the specific case where species cannot be conveniently identified that claims may be grouped in accordance with the species to which they are restricted (see MPEP § 809.02(a)(B)). As the applicant provided figures illustrating the mutually exclusive characteristics of the species, the previous restriction requirement was properly composed in accordance with MPEP § 809.02(a)(B).
For all of the above reasons, the species requirement between the remaining species (i.e., between species 1, 4-10, and now-combined species 2/3) is still deemed proper and is, therefore, made final.
The applicant indicated that claims 1-20 read on the elected species. Claims 1-5, 11-12, and 18-20, however, read on a non-elected species of the claimed invention. For example, the “channel” and/or “notch” configurations recited in claims 1-5, 11-12, and 18-20 are exclusive of, for example and non-exhaustively, the species reading on figures 4A-4B. Accordingly, claims 1-5, 11-12, and 18-20 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.
Drawings
Quotes from the specification are from the published application US 2024/0203801.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "R2" and "R3" have both been used in figure 4A to designate a circular notch in a lead that directly contacts an etched region (see par.0044/ll.6-7).
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 - 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.
Claims 6-10 and 13-14 are rejected under 35 U.S.C. 112(b) for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 6 recites the limitation “wherein at least one bond pad is coupled to the top surface of at least one lead by a bond wire”, indicating the presence of a single bond wire, before following with “a mold compound covering… the bond wires”, indicating the presence of a plurality of bond wires. No “bond wires” or plurality of “bond wires” have sufficiently been previously recited in the claim or in any parental claim. Accordingly, there is insufficient antecedent basis for this limitation in the claim.
Claims 7-10 and 13-14 depend from claim 6 and thus inherit the deficiencies identified supra.
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.
Claims 6 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tandy (US 6,404,216).
Regarding claim 6, Tandy (see, e.g., fig. 10) shows all aspects of the instant invention, including a semiconductor package comprising:
a semiconductor die 31 having a top side with bond pads 35;
a leadframe 18 including a die attach pad 15 (see, e.g., col.3/ll.48-49), a bottom side of the semiconductor die mounted on the die attach pad using a die attach material 30, the leadframe having at least one lead 11/(20 directly contacting 11) see, e.g., col.4/ll.15-16) with a top surface and a bottom surface, wherein at least one bond pad is coupled to the top surface of at least one lead by a bond wire 32;
a mold compound 33 (see, e.g., col.4/ll.38-43) covering the semiconductor die, the bond wire, and at least a portion of the at least one lead; and
a test pad (84 farthest from 31) located on or adjacent to the bottom surface of the at least one lead, the test pad electrically coupled to the at least one lead (see, e.g., fig. 10 and col.2/ll.37-38)
Regarding claim 15, Tandy (see, e.g., fig. 10) shows all aspects of the instant invention, including a semiconductor package comprising:
a leadframe 18 including a die attach pad 15 (see, e.g., col.3/ll.48-49) and a plurality of leads 11/(20 directly contacting 11) (see, e.g., col.4/ll.15-16) spaced apart from the die attach pad, each lead having a top and a bottom surface;
a semiconductor die 31 having a top side with bond pads 35 and a bottom side mounted on the die attach pad using a die attach material 30, wherein the bond pads are individually coupled to the top surface of selected ones of the leads by bond wires 32;
a mold compound 33 (see, e.g., col.4/ll.38-43) covering the semiconductor die, the bond wires, and at least a portion of the plurality of leads; and
each of the plurality of leads having a test pad (84 farthest from 31) located on or adjacent to the bottom surface of the lead, each test pad electrically coupled to a respective lead (see, e.g., fig. 10 and col.2/ll.37-38)
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lin (US 2021/0287950) in view of Koduri (US 2020/0203242) and Tandy.
Regarding claim 6, Lin (see, e.g., fig. 3) shows most aspects of the instant invention, including a semiconductor package 300 comprising:
a semiconductor die 100 having a top side with bond pads 315;
a leadframe 316/318 (see, e.g., par.0036/ll.3) including a die attach pad 318, a bottom side of the semiconductor die 100 mounted on the die attach pad 318, the leadframe 316/318 having at least one lead 316 with a top surface (uppermost surface of 316 directly attaching to 321) and a bottom surface (lowermost surface of 316 parallel but opposite to top surface), wherein at least one bond pad 315 is coupled to the top surface of at least one lead by a bond wire 321;
a mold compound 330 covering the semiconductor die 100, the bond wire 321, and at least a portion of the at least one lead 316 (see, e.g., par.0036/ll.4); and
a test pad B2 located on or adjacent to the bottom surface of the at least one lead (see, e.g., fig. 3, in which the invention illustrates the bottom surface of lead 316 as adjacent to surfaces of test pad B2), the test pad electrically coupled to the at least one lead (see, e.g., pars.0018 and 0036/ll.6-9)
Although Lin (see, e.g., fig. 3) teaches that Lin’s semiconductor die 100 is mounted on a die attach pad 318, Lin fails to explicitly specify the mechanism for this mounting, including if the mounting is done through using a die attach material. Koduri, in the same field of endeavor and in a similar package to Lin, teaches mounting a semiconductor die to a die attach pad using a die attach material (see, e.g., Koduri: fig. 3A and pars.0050/ll.15-20 and 0069/ll.7-9). Koduri teaches that the inclusion of such a die attach material may suitably mount a die to a die attach pad while simultaneously providing a desired level of electrical isolation (see, e.g., Koduri: pars.0050/ll.15-20 and 0069/ll.7-9). Furthermore, Tandy, in the same field of endeavor, teaches that the inclusion of a die attach material between a semiconductor device and a die attach pad may provide adhesion between the die attach pad and the device while simultaneously providing good thermal conductivity and low resistance contacts (see, e.g., Tandy: col.4/ll.23-28).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to mount Lin’s semiconductor die onto Lin’s die attach pad using a die attach material, as taught by Koduri and Tandy, so as to suitably mount Lin’s semiconductor die to Lin’s die attach pad while potentially providing a desired level of electrical isolation, and so as to provide adhesion between Lin’s die attach pad and semiconductor die while also ensuring good thermal conductivity and low resistance contacts.
Claims 7-10 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tandy in view of De La Cerda (US 2020/0211913).
Regarding claim 7, Tandy (see, e.g., fig. 10 and col.4/ll.55-58) shows that the test pad (84 farthest from 31) protrudes away from the bottom surface of the at least one lead 11/(20 directly contacting 11). However, although Tandy (see, e.g., fig. 10 and col.4/ll.55-58) appears to shows that the test pad (84 farthest from 31) is an integral part of the bottom surface of the at least one lead 11/(20 directly contacting 11), Tandy fails to explicitly specify this. De La Cerda, in the same field of endeavor and in a similar device to Tandy, teaches a semiconductor package 200 having at least one lead 234/236, wherein test pads 226D/226E are an integral part of the bottom surface of the at least one lead (see, e.g., De La Cerda: fig. 2 and pars.0040/ll.10-11 and 0041/ll.7-8).
De La Cerda is evidence showing that one of ordinary skill in the art would appreciate that a test pad being an integral part of the bottom surface of an at least one lead through one configuration would be equivalent to a test pad formed on the bottom surface of but not being an integral part of the bottom surface of an at least one lead or being an integral part of the bottom surface of an at least one lead through another configuration, and that such differences would result in no unexpected changes in the performance of the package structure of Tandy. That is, the test pad configurations of both Tandy and De La Cerda would yield the predictable result of providing a suitable conductive contact-lead connection for appropriate testing, examining, and/or diagnosing of semiconductor devices.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either a test pad being an integral part of the bottom surface of an at least one lead, as taught by De La Cerda, or a test pad formed on the bottom surface of but not being an integral part of the bottom surface of an at least one lead or being an integral part of the bottom surface of an at least one lead through another configuration, as taught by Tandy, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing a suitable conductive contact-lead connection for appropriate testing, examining, and/or diagnosing of semiconductor devices. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Regarding claim 8, Tandy teaches that many heights may suffice for Tandy’s test pad (see, e.g., col.4/ll.61-62). However, Tandy fails to explicitly specify that Tandy’s test pad has a height of 10-15 µm.
However, 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 height, i.e., 10-15 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Tandy.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed height 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, Tandy (see, e.g., fig. 10 and col.4/ll.55-58) shows that the test pad (84 farthest from 31) extends from a side of the at least one lead 11/(20 directly contacting 11) and that the test pad protrudes away from the bottom surface of the at least one lead. However, although Tandy (see, e.g., fig. 10 and col.4/ll.55-58) appears to shows that the test pad (84 farthest from 31) is an integral part of the at least one lead 11/(20 directly contacting 11), Tandy fails to explicitly specify this. De La Cerda, in the same field of endeavor and in a similar device to Tandy, teaches a semiconductor package 200 having at least one lead 234/236, wherein test pads 226D/226E are an integral part of the at least one lead (see, e.g., De La Cerda: fig. 2 and pars.0040/ll.10-11 and 0041/ll.7-8).
De La Cerda is evidence showing that one of ordinary skill in the art would appreciate that a test pad being an integral part of an at least one lead through one configuration would be equivalent to a test pad formed on but not being an integral part of an at least one lead or being an integral part of an at least one lead through another configuration, and that such differences would result in no unexpected changes in the performance of the package structure of Tandy. That is, the test pad configurations of both Tandy and De La Cerda would yield the predictable result of providing a suitable conductive contact-lead connection for appropriate testing, examining, and/or diagnosing of semiconductor devices.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either a test pad being an integral part of an at least one lead, as taught by De La Cerda, or a test pad formed on but not being an integral part of an at least one lead or being an integral part of an at least one lead through another configuration, as taught by Tandy, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing a suitable conductive contact-lead connection for appropriate testing, examining, and/or diagnosing of semiconductor devices. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Regarding claim 10, Tandy (see, e.g., fig. 10 and col.4/ll.64-65) teaches that the placement of Tandy’s test pad (84 farthest from 31) is not limited to any particular coordinate on Tandy’s at least one lead 11/(20 directly contacting 11). Accordingly, one of ordinary skill in the art would understand that Tandy implicitly teaches an embodiment wherein Tandy’s test pad is located adjacent to a corner of the at least one lead. Furthermore, De La Cerda, in the same field of endeavor and in a similar device to Tandy, teaches a device wherein a test pad 226D is an integral part of an at least one lead 234, wherein the test pad is further located adjacent to a corner of the at least one lead (see, e.g., De La Cerda: fig. 2 and pars.0040/ll.10-11 and 0041/ll.7-8).
Tandy and De La Cerda are evidence showing that one of ordinary skill in the art would appreciate that a test pad located adjacent to a corner of an at least one lead would be equivalent to a test pad located on any other position of an at least one lead, and that such differences would result in no unexpected changes in the performance of the package structure of Tandy. That is, the test pad locations of both Tandy and De La Cerda would yield the predictable result of providing a suitable conductive contact-lead connection for appropriate testing, examining, and/or diagnosing of semiconductor devices.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either a test pad located adjacent to a corner of an at least one lead, as taught by De La Cerda, or a test pad located on any other position of an at least one lead, as taught by Tandy, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing a suitable conductive contact-lead connection for appropriate testing, examining, and/or diagnosing of semiconductor devices. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Regarding claim 13, Tandy (see, e.g., fig. 10) shows that the test pad (84 farthest from 31) protrudes away from the bottom surface of the at least one lead 11/(20 directly contacting 11).
Regarding claim 14, Tandy (see, e.g., fig. 10 and col.4/ll.61-62) shows that the test pad (84 farthest from 31) has a height relative to the bottom surface of the at least one lead 11/(20 directly contacting 11), wherein Tandy further teaches that many heights may suffice for Tandy’s test pad (see, e.g., col.4/ll.61-62). However, Tandy fails to explicitly specify that Tandy’s test pad has a relative height of 10-15 µm.
However, 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. Since the applicant has not established the criticality (see next paragraph below) of the claimed relative height, i.e., 10-15 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Tandy. See the comments stated above in paragraphs 28-31 with respect to claim 8 regarding criticality, which are considered to be repeated here.
Regarding claim 16, Tandy (see, e.g., fig. 10 and col.4/ll.55-58) shows that each test pad (84 farthest from 31) protrudes away from the bottom surface of the respective lead 11/(20 directly contacting 11). However, although Tandy (see, e.g., fig. 10 and col.4/ll.55-58) appears to shows that each test pad (84 farthest from 31) is an integral part of the bottom surface of the respective lead 11/(20 directly contacting 11), Tandy fails to explicitly specify this. De La Cerda, in the same field of endeavor and in a similar device to Tandy, teaches a semiconductor package 200 having a plurality of leads 234, 236, wherein test pads 226D, 226E are each an integral part of the bottom surface of a respective lead (see, e.g., De La Cerda: fig. 2 and pars.0040/ll.10-11 and 0041/ll.7-8).
De La Cerda is evidence showing that one of ordinary skill in the art would appreciate that each test pad being an integral part of the bottom surface of a respective lead through one configuration would be equivalent to each test pad being formed on the bottom surface of but not being an integral part of the bottom surface of a respective lead or being an integral part of the bottom surface of a respective lead through another configuration, and that such differences would result in no unexpected changes in the performance of the package structure of Tandy. That is, the test pad configurations of both Tandy and De La Cerda would yield the predictable result of providing suitable conductive contact-lead connections for appropriate testing, examining, and/or diagnosing of semiconductor devices.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either each test pad be an integral part of the bottom surface of a respective lead, as taught by De La Cerda, or each test pad be formed on the bottom surface of but not be an integral part of the bottom surface of a respective lead or each test pad be an integral part of the bottom surface of a respective lead through another configuration, as taught by Tandy, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing suitable conductive contact-lead connections for appropriate testing, examining, and/or diagnosing of semiconductor devices. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Regarding claim 17, Tandy (see, e.g., fig. 10 and col.4/ll.55-58) shows that each test pad (84 farthest from 31) extends from a side of the respective lead 11/(20 directly contacting 11) and that each test pad protrudes away from the bottom surface of the respective lead. However, although Tandy (see, e.g., fig. 10 and col.4/ll.55-58) appears to shows that each test pad (84 farthest from 31) is an integral part of the respective lead 11/(20 directly contacting 11), Tandy fails to explicitly specify this. De La Cerda, in the same field of endeavor and in a similar device to Tandy, teaches a semiconductor package 200 having a plurality of leads 234, 236, wherein test pads 226D, 226E are each an integral part of a respective lead (see, e.g., De La Cerda: fig. 2 and pars.0040/ll.10-11 and 0041/ll.7-8).
De La Cerda is evidence showing that one of ordinary skill in the art would appreciate that each test pad being an integral part of a respective lead through one configuration would be equivalent to each test pad being formed on but not being an integral part of a respective lead or each test pad being an integral part of a respective lead through another configuration, and that such differences would result in no unexpected changes in the performance of the package structure of Tandy. That is, the test pad configurations of both Tandy and De La Cerda would yield the predictable result of providing suitable conductive contact-lead connections for appropriate testing, examining, and/or diagnosing of semiconductor devices.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have either each test pad be an integral part of a respective lead, as taught by De La Cerda, or each test pad be formed on but not be an integral part of a respective lead or each test pad be an integral part of a respective lead through another configuration, as taught by Tandy, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing suitable conductive contact-lead connections for appropriate testing, examining, and/or diagnosing of semiconductor devices. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Conclusion
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