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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 November 2025 has been entered.
Response to Arguments
The Examiner called the Applicant’s representative Ming Wai Choy, Registration No. 70,428 at (669) 721-4349 and left a voicemail requesting an interview in regards to the instant application on 03 December 2025. The Examiner wished to discuss potential Examiner amendments to the pending claims and/or instant filed specification so that the claim limitations have clear and direct support within the instant filed specification, as well as support for the added limitations of “gap” being a “first gap” and a “second gap.” The Examiner did not receive a return call. The Examiner remains open to conducting an interview regarding the instant application to potentially resolve pending issues.
Applicant's arguments filed 24 November 2025 have been fully considered but they are not persuasive. Applicant argues that the recited elements in the claims: “first opening, “second opening,” “first sealing layer,” “second sealing layer,” “first inner surface,” “first surface,” second surface,” “second inner surface,” and “metal layer” that do not appear in the instant filed specification, allegedly match elements within a table provided by the Applicant, thus the objections to the instant specification, drawings and rejections under 35 U.S.C. 112(b) should be withdrawn by the Examiner, and Applicant makes reference to 37 CFR 1.75(d)(1) and MPEP 2173.03 alleging there is clear support for the recited elements within the instant filed specification and drawings. The Examiner respectfully disagrees. The fact that the Applicant feels that it is necessary that he/she must provide a table to allegedly match the aforementioned elements in the claimed invention to elements recited in the instant filed specification is clear evidence that one of ordinary skill in the art as of the effective filing date cannot be confident the claimed element is the identical element being clearly referenced within the instant filed specification. The aforementioned recited elements/terms do not have “clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description” as stated in 37 CFR 1.75(d)(1). If, in fact, the recited elements identically match the instant filed specification terms in the table provided by the Applicant, the Applicant could easily amend the instant filed specification adding the recited elements with an alternative statement. As stated above, the Examiner attempted to call the Applicant’s representative to perform such an amendment with Applicant’s authorization, but did not receive a return call. It appears that the Applicant is unwilling to amend the instant filed specification to add the claimed elements so that there is clear antecedent basis within the instant filed specification is due to the fact there are multiple species/embodiments of the claimed invention. It is noted by the Examiner that Applicant only refers to elected species/embodiment of Figs. 2A-2B in the provided table, however, there are additional non-elected species/embodiments of Figs. 3-7; Figs. 9-11; Figs. 12-14; Figs. 15-17; Figs. 18-19, which, based on the instant filed specification, the recited elements in instant independent claim 1 also apply. In addition, the presence of withdrawn claims 7 and 9-20, which are not under examination, and potentially may be rejoined, appear to also contain recited elements that do not have clear antecedent basis within the instant filed specification, such as “third opening” and “third sealing layer. As an example, non-elected species/embodiment of Figs. 9 and 12 depict two openings 900 and 902 and non-elected species/embodiment of Fig. 15 depicts four openings 1500, 1502, 1506 and 1508. As such, it is unclear as to which the first opening through the substrate is being recited. 37 CFR 1.75(d)(2) refers to different inventions/species in one application and refers to 37 CFR 1.146, thus the claimed elements/terms apply to the non-elected species/embodiments. An identical argument is made for the term second opening related to the second sealing layer. In addition, the table provided by the Applicant that the recited metal layer on the first surface of the substrate is allegedly metal interconnect 206 stated in the instant filed specification. However, the instant filed specification states that metal interconnects 202, 204, 205, 206 and 214 can take the form of pads, vias and traces, which may, or may not be metal layers. As such, it is unclear as to exactly which of the metal interconnects recited in the instant filed specification are exactly being referred to by the claimed invention, thus lacking clear antecedent basis to the instant filed specification.
In addition to the above, Applicant has amended instant independent claim 1 to employ the limitation “gap” between the second surface and the sensor surface, and amended instant amended dependent claim 8 recites that the gap is a “first gap” and subsequently recites “a second gap.” The Applicant failed to provide any information as to exactly what portions of the instant filed disclosure (both instant specification and drawings) provide support for these added limitations. The instant filed specification employs the reference numeral 207 and 211 for the term “gap” and does not employ “first gap” or “second gap,” which only compounds the previous issues regarding clear antecedent basis for the recited limitations in the instant claimed invention. It appears the gaps 207 and 211 are between elements 207 and 206, allegedly in regards to the “first sealing layer” and not the “second sealing layer,” further rendering claimed invention indefinite.
Lastly, Applicant’s arguments with respect to claim(s) 1-6 and 8 have been considered in regards to the prior art, but are moot because the new ground of rejection does not rely on any and/or all references and new grounds of rejection due to amendment of instant independent claim 1, applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claims 1-6 and 8 recite the limitations of: “first opening, “second opening,” “first sealing layer,” “second sealing layer,” “first metal layer,” “second metal layer,” “first surface,” “second surface,” “first inner surface,” “second inner surface,” “first gap” and “second gap.” These limitations either do not have reference numbers indicating as to exactly which components in the instant filed drawings, and/or do not appear at all within the instant filed specification, or both..
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings are objected to because the instant specification fails to employ reference numbers for the claim limitations of: “first opening, “second opening,” “first sealing layer,” “second sealing layer,” “first metal layer,” “second metal layer,” “first surface,” “second surface,” “first inner surface,” “second inner surface,” “first gap” and “second gap” but appears to employ some reference numbers that may be associated with some of these claim limitations, but it is unclear. . No new matter should be entered.
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.
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 1-6 and 8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Instant independent claim 1 and dependent claims therefrom employ the limitations: “first opening, “second opening,” “first sealing layer,” “second sealing layer,” “first metal layer,” “second metal layer,” “first surface,” “second surface,” “first inner surface,” “second inner surface,” “first gap” and “second gap.” which are not explicitly recited within the instant specification and/or have specific reference numbers associated therewith in the instant drawings of multiple embodiments of the instant claimed invention. The claimed limitations must have clear antecedent basis within the instant filed specification. As such, it is unclear as to the exact elements being recited relative to the instant specification and/or drawings, rendering the claims indefinite.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the 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.
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.
As best understood, claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2010/0244171 to Nagamatsu et al. Nagamatsu et al. disclose an apparatus (see entire reference, including multiple embodiments in Figs. 1-6) including a substrate (20) having opposite first and second surfaces, the substrate including a first opening (21) through the substrate; a first sealing layer (25) covering an inner surface of the first opening, the inner surface extending between first and second surfaces; and contact pads (161) on the second surface; a fluid sensor/CMOS sensor/semiconductor device/image sensor (10, 11) (note: the sensor is capable of measuring optical properties of a fluid, thus meeting the broadly recited limitation of “fluid sensor”) having a sensor surface facing the second surface (see embodiment Figs. 4 and 6) and the first opening; metal interconnects (10, 12, 13, 14, 30, 160) coupled to the sensor surface and contact pads (note: 10 is a wiring substrate with wiring layers, which inherently are metal interconnections, or are broadly metal interconnects to one having ordinary skill in the art as of the effective filing of the instant invention); a second sealing layer (31) in a gap between the second surface and the sensor surface (see Figs. 4 and 6), in which the second sealing layer surrounds the metal interconnects and includes a second opening (space between sec) that overlaps with the first opening, and at least part of the sensor surface is exposed through the first and second openings (meeting the limitations recited in instant independent claim 1); wherein the first sealing layer includes a metal layer which includes gold and nickel see para 0046) (meeting all limitations recited in instant dependent claims 2 and 3); wherein the second sealing layer includes an adhesive being epoxy (see para 0043) (meeting all limitations recited in instant dependent claims 4 and 5 and limitation in instant dependent claim 6); wherein the inner surface is a first inner surface; the second opening has a second inner surface; and the second inner surface is a sloping (i.e. curved, see Figures of different embodiments) surface (meeting all the limitations recited in instant dependent claim 6).
Conclusion
Due to the rejections under 35 U.S.C. 112(b), a through search and comparison of the prior art to instant dependent claim 8 could not be reasonably made by the Examiner. The absence of a prior art rejection of instant independent claim 8 is not an indication of allowable subject matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855