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 amendment filed on 05/18/2026.
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.
Amendment Status
The amendment filed on 05/18/2026 in reply to the previous Office action mailed on 01/20/2026 has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 6-10, 13-17, and 21-26.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the features canceled from the claims. No new matter should be entered.
“Wherein the test pad and the lead are of a same material”, as recited in claim 6
“Wherein the pad and the lead are of a same material”, as recited in claim 26
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.
Specification
The disclosure is objected to because of the following informalities:
The specification fails to provide antecedent basis for claim 6, reciting that “the test pad and the lead are of a same material”. The specification additionally fails to provide antecedent basis for claim 26, reciting that “the pad and the lead are of a same material”. Furthermore, the original disclosure fails to provide antecedent basis for Applicant’s newly added amendments to paragraph 0034, including the statement “due to partial etch the material of the surface of the lead, the test pad and the lead includes the same material”.
Appropriate correction is required. No new matter should be entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 6-10, 13-14, and 26 rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 6 has been amended to recite at least the new limitation “wherein the test pad and the lead are of a same material”. Applicant has not alleged where support for the newly amended limitations may be found. However, a review of the written description as originally filed fails to find any support for the limitation “wherein the test pad and the lead are of a same material”. The specification, as originally filed, merely states that “test pads 203, 204 may be formed during a leadframe manufacturing process by partially etching material surrounding test pads 203, 204 on the surface of leads 201, 202 thereby leaving behind the raised test area” (see, e.g., par.0034 of published application US 2024/0203801). Subsequently, the written description as originally filed gives no mention or assertion that the material “surrounding the test pads on the surface of the leads” is of the same material as the leads. In fact, the written description as originally filed gives no mention of what materials may constitute the lead and test pads at all. Furthermore, the written description as originally filed fails to evidence that, even in a case that the partial etch is done of the leads directly, the leads employ a consistent material throughout their physical structure such that the test pads are guaranteed to be formed of the same material as the remainder of the leads. Similarly, a review of the Drawings as originally fails to identify any material for any test pad or lead. Accordingly, the newly amended limitations are directed to New Matter.
Claim 26 recites the same core limitation as claim 6, reciting “wherein the pad and the lead are of a same material”. Accordingly, the comments stated above regarding claim 6 are considered to be repeated for claim 21 and the recited “pad” of claim 21.
The applicant may cancel the claims, amend the claims, or demonstrate explicit support for the claimed subject matter in the original disclosure (e.g., by citing specific excerpts from Specification or features in Drawings related to the claimed embodiment, as originally filed). A broad statement alleging support for the claimed subject matter will be considered non-persuasive.
Claims 7-10 and 13-14 depend from claim 6 and thus inherit the deficiencies identified supra.
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 15-17 are rejected under 35 U.S.C. 112(b) as 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 15 recites the limitation “a mold compound covering… at least a portion of the plurality of leads” before reciting the limitation “the side surface of the lead coplanar with a side surface of the mold compound in a side view of the IC package”. It is unclear to which specific lead of the plurality of leads the seemingly singular limitations “the side surface of the lead” are intended to refer. As such, this limitation in the claim is indefinite, as it is unclear to which specific lead, the singular limitations “the”, “surface” and “the lead” are intended to reference.
Claims 16-17 depend from claim 15 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 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tandy (US 6,404,216).
Regarding claim 15, Tandy (see, e.g., fig. 10) shows all aspects of the instant invention, including an integrated circuit (IC) package comprising:
a leadframe 11/20/15 including a die attach pad 15 and a plurality of leads 11/20 spaced apart from the die attach pad, each lead having a top surface, a bottom surface, and a side 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 covering the semiconductor die, the bond wires, and at least a portion of the plurality of leads, the side surface of a lead being coplanar with a side surface of the mold compound in a side view of the IC package (see, e.g., fig. 11, wherein a side surface of the mold compound laterally between the lead and die attach pad directly contacts and is coplanar with a side surface of the lead); and
each of the plurality of leads having a test pad 84 located on or adjacent to the bottom surface of the lead, each test pad electrically coupled to a respective lead (see, e.g., col.1/ll.38-50 and col.6/ll.10-29 and 60-67)
With regards to other language recited in claim 15, see the comments stated above in paragraph 16.
Regarding claim 16, Tandy (see, e.g., fig. 10) shows that each test pad 84 is an integral part of the bottom surface of the respective lead 11/20, each test pad protruding away from the bottom surface of the respective lead.
Regarding claim 17, Tandy (see, e.g., fig. 10) shows that each test pad 84 extends from a side of the respective lead 11/20, each test pad is an integral part of the respective lead, and each test pad protruding away from the bottom surface of the respective lead.
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 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Cadag (US 10,128,169) in view of You (US 5,886,404).
Regarding claim 21, Cadag (see, e.g., figs. 4 and 14) shows most aspects of the instant invention, including a semiconductor package comprising:
a die attach pad 130 and a lead 128;
a semiconductor die 138 attached to the die attach pad and electrically connected to the lead (see, e.g., col.9/ll.53-56); and
a mold compound 126 covering portions of the die attach pad, the lead, and the semiconductor die, a portion of the die attach pad and a portion of the lead visible from a bottom view of the semiconductor package (see, e.g., fig. 4A), wherein the portion of the lead visible from a bottom view includes a bottom surface and a conductive connector 153 protruding from the bottom surface
Cadag shows most aspects of the instant invention. Cadag further teaches that Cadag’s conductive connectors are intended to mount Cadag’s semiconductor package within and to other structures (see, e.g., Cadag: col.12/ll.41-44). Cadag, however, fails to specify that the conductive connector may be a pad. You, in the same field of endeavor and in a similar device to Cadag, also teaches pads to be suitable for mounting semiconductor packages, wherein You further teaches that having a pad protruded from the bottom surface of a lead improves space management, facilitates testing of the lead, and improves heat transfer from the package to the exterior (see, e.g., You: col.4/ll.7-12).
You is evidence showing that one of ordinary skill in the art would appreciate that a protruding conductive connector would be equivalent to a protruding pad, and that such differences would result in no unexpected changes in the performance of the integrated circuit structure of Cadag. That is, the protruding structures of both Cadag and You would yield the predictable result of providing a suitable supportive structure for the mounting of a semiconductor package.
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 protruding pad, as taught by You, or another protruding connection structure, as taught by Cadag, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing a suitable supportive structure for the mounting of a semiconductor package. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Furthermore, You is evidence that at the time of filing the invention one of ordinary skill in the art would find particular incentive to have the already-protruding conductive connectors be pads, as taught by You, so as to improve space management, facilitate lead testing, and improve heat transfer from the package to the exterior in Cadag’s device.
Regarding claim 22, Cadag (see, e.g., fig. 14 and col.9/ll.53-56) shows that the semiconductor die 138 is electrically connected to the lead 128 via a bond wire 142.
Regarding claim 23, Cadag (see, e.g., fig. 14) shows that the bottom surface is coplanar with a bottom surface of the semiconductor package (see, e.g., fig. 14, wherein areas of the surface of 128 closest to 153 and exposed to the exterior correspond to a bottom surface of the semiconductor package).
Regarding claim 24, Cadag (see, e.g., fig. 14) shows that the lead 128 includes a side surface that is coplanar with a side surface of the semiconductor package.
Regarding claim 25, You (see, e.g., col.4/ll.6-7) teaches that the pad 23b has a prescribed height. You, however, fails to explicitly specify what this height may be, including if the height is 10-15 um.
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 um, it would have been obvious to one of ordinary skill in the art to use these values in the device of Cadag/You.
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).
Allowable Subject Matter
Claim 26 is rejected herein and is dependent upon a rejected base claim but would be allowable if (1) rewritten or otherwise established to overcome the 35 U.S.C. 112(a) rejections set forth in this Office action and (2) rewritten in independent form including all the limitations of the base claim and any intervening claims.
Claims 6-10 and 13-14 are rejected herein but would be allowable if rewritten or otherwise established to overcome the 35 U.S.C. 112(a) rejections set forth in this Office action.
Response to Arguments
Applicant’s amendments to the specification as filed on 05/18/2026 have overcome the objections to the drawings put forth in the previous Office action mailed on 01/20/2026. Accordingly, the objections to the drawings put forth in the previous Office action are hereby withdrawn.
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant’s amendment necessitated the new grounds 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.
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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
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