The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
Applicant's amendment of claims 1, 11, and 13, cancellation of claims 17-18, and addition of claims 21-22 in “Claims - 02/27/2026” with “Amendment/Req. Reconsideration-After Non-Final Reject - 02/27/2026”, have been acknowledged by Examiner.
This office action consider claims 1-16 and 19-22 pending for prosecution, wherein claims 15-16 and 19-20 are withdrawn from further consideration, and claims 1-14 and 21-22 are presented for examination.
Response to Arguments
Applicant's arguments filed in the “Applicant Arguments/Remarks Made in an Amendment” on 02/27/2026 have been fully considered, but they are not persuasive, because of the following: the Applicant's amendment of claim 1 necessitated the shift in new grounds of rejection detailed in sections below. The shift in grounds of rejection renders the Applicant's arguments moot.
Please see the analysis of rejection for claims below.
Claim Rejections - 35 USC § 112
1. Applicant’s argument, in the “Applicant Arguments/Remarks Made in an Amendment” filed on 02/27/2026, see “Applicant has amended claim 11 without prejudice or disclaimer, to further clarify claim 11. In view of the foregoing amendments, Applicant respectfully requests reconsideration and withdrawal of the rejection of claim 11 under 35 U.S.C. § 112” (remarks on page 8), has been considered and is persuasive.
In view of that along with the relevant amendment to claim 11, in the file “Claims” filed on 02/27/2026, the 35 U.S.C. § 112(b) rejection to claim 11 has been withdrawn.
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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
2. Claims 1-8, 10-12, 14, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsai et al. (US 20200013750 A1; hereinafter Tsai).
Regarding claim 1, Tsai teaches a packaged integrated circuit (IC) (see the entire document, specifically Fig. 1+; [0007+], and as cited below), comprising:
a package substrate (102’; Fig. 26; [0046]) having opposite first (bottom surface of 102’) and second surfaces (top surface of 102’) and including metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]) surrounded by an insulation material (44; Fig. 26 in view of Fig. 4; [0022]), the package substrate (102’; Fig. 26; [0046]) 3including a depression region (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) that extends from the first surface (bottom surface of 102’), and the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44) including a material (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of epoxy and Al.sub.2O.sub.3) different from the insulation material (44; Fig. 26 in view of Fig. 4; [0022]; PBO or polyimide) and the metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]), the material filling (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of epoxy and Al.sub.2O.sub.3) the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44);
a semiconductor die (36; Fig. 26; [0021-0022]) on part of the first surface (bottom surface of 102’) adjacent to the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44), the semiconductor die (36; Fig. 26; [0021]) including circuitry (see [0022]; layer 42 are electrically coupled to the integrated circuit devices such as transistors in device die 36) coupled to the metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]); and
a mold compound (62; Fig. 26 in view of Fig. 10; [0033]) covering the semiconductor die (36; Fig. 26; [0021]) and the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44).
Regarding claim 2, Tsai teaches all of the features of claim 1.
Tsai further comprising first metal pads (122; Fig. 26; [0045]) on the first surface (bottom surface of 102’) and second metal pads (see [0046]; where 100 is coupled to 106 bonding 102’ to 104) on the second surface (top surface of 102’), wherein the metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]) are electrically coupled between the first (122; Fig. 26; [0045]) and second metal pads (see [0046]; where 100 is coupled to 106 bonding 102’ to 104), and the semiconductor die (36; Fig. 26; [0021]) is mounted on the first metal pads (122; Fig. 26; [0045]).
Regarding claim 3, Tsai teaches all of the features of claim 2.
Tsai further teaches wherein the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44) is a cavity abutted by the insulation material (44; Fig. 26 in view of Fig. 4; [0022]; PBO or polyimide) on at least two sides.
Regarding claim 4, Tsai teaches all of the features of claim 3.
Tsai further teaches wherein the material (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3) includes an epoxy polymer.
Regarding claim 5, Tsai teaches all of the features of claim 4.
Tsai further teaches wherein: the semiconductor die (36; Fig. 26; [0021-0022]) is a first semiconductor die;
the packaged IC (Fig. 26) further comprises a second semiconductor die (36; Fig. 26; [0021-0022]) on the first surface;
the first semiconductor die (36; Fig. 26; [0021-0022]) is on a first side of the cavity (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44);
the second semiconductor die (36; Fig. 26; [0021-0022]) is on a second side of the cavity (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44) opposite to the first side; and
the epoxy polymer (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3) (see below for “is configured as an optoisolator”) between the first (36; Fig. 26; [0021-0022]) and second semiconductor (36; Fig. 26; [0021-0022]) dies.
It is the Examiner’s position that the limitation of a "the epoxy polymer is configured as an optoisolator between the first and second semiconductor dies” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to 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); MPEP 2114. Furthermore, because the device of Tsai has all of the structural limitations of the claimed invention, the device is capable of operating in the manner claimed by the applicant. 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).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Tsai teaches the structure of the claims as detailed above. Thus, Tsai teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 6, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein the mold compound (62; Fig. 26 in view of Fig. 10; [0033]) is a first mold compound; and wherein the material (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3) includes a second mold compound different from the first mold compound (62; Fig. 26 in view of Fig. 10; [0033]; PBO or polyimide).
Regarding claim 7, Tsai teaches all of the features of claim 6.
Tsai further teaches wherein the second mold compound (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3) includes a resin and metal particles, in which the metal particles (48B; [0023-0024]; material comprising of aluminum particles) are suspended in the resin (48A; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3).
Regarding claim 8, Tsai teaches all of the features of claim 7.
Tsai further teaches wherein: the depression region (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) is a first cavity abutted by the insulation material (44; Fig. 26 in view of Fig. 4; [0022]) on at least two sides; the package substrate (102’; Fig. 26; [0046]) further includes a second cavity (Fig. 26 in view of Figs. 4-5; [0022]; left recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) and a third cavity (Fig. 26 in view of Figs. 4-5; [0022]; right recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) each extending from the first surface (bottom surface of 102’); the first cavity (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) is between the second (Fig. 26 in view of Figs. 4-5; [0022]; left recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) and third (Fig. 26 in view of Figs. 4-5; [0022]; right recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) cavities; and at least part of the second cavity (Fig. 26 in view of Figs. 4-5; [0022]; left recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) and third cavity (Fig. 26 in view of Figs. 4-5; [0022]; right recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) filled with the second mold compound (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3).
Regarding claim 10, Tsai teaches all of the features of claim 8.
Tsai further teaches wherein: the semiconductor die (36; Fig. 26; [0021-0022]) is a first semiconductor die (36; Fig. 26; [0021-0022]); the packaged IC further comprises a second semiconductor die (36; Fig. 26; [0021-0022]) on the first surface; the first semiconductor die (36; Fig. 26; [0021-0022]) is on a first side of the second cavity (Fig. 26 in view of Figs. 4-5; [0022]; left recess in Fig. 26 in view of Figs. 4-5 between layers 42/44); and the second semiconductor die (36; Fig. 26; [0021-0022]) is on a second side of the third cavity (Fig. 26 in view of Figs. 4-5; [0022]; right recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) opposite to the first side.
Regarding claim 11, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44) includes an indent that abuts the insulation material (44; Fig. 26 in view of Fig. 4; [0022]; PBO or polyimide) on one side, and the material (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy, or the like, and Al.sub.2O.sub.3) in the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44) and different from the insulation material (44; Fig. 26 in view of Fig. 4; [0022]; PBO or polyimide) is the same as the mold compound (62; Fig. 26 in view of Fig. 10; [0033]; polymer) that covers the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44).
Regarding claim 12, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein the metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]; copper) include a first metal, and the material (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of a polymer, a resin, an epoxy or the like, and Al.sub.2O.sub.3) includes a second metal (48B; [0023-0024]; material comprising of aluminum particles) different from the first metal (42; Fig. 26 in view of Fig. 4; [0022]; copper).
Regarding claim 14, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein the mold compound (62; Fig. 26 in view of Fig. 10; [0033]; PBO) is a first mold compound, and the insulation material (44; Fig. 26 in view of Fig. 4; [0022]; PBO or polyimide) includes at least one of: a build-up film or a second mold compound (44; Fig. 26 in view of Fig. 4; [0022]; PBO or polyimide).
Regarding claim 21, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein the material (48; Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of epoxy resin and aluminum particles) is a magnetic mold compound (Fig. 26 in view of Figs. 4-5; [0023-0024]; material comprising of epoxy resin and aluminum particles in view of see [0024] of the “Specification” of the instant invention where it states that “magnetic mold compounds 412, 414 and 416 (e.g., metal particles suspended in resin”).
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
3. Claims 9, 13, and 22 are rejected under 35 U.S.C.103 as being unpatentable over Tsai et al. (US 20200013750 A1; hereinafter Tsai), in view the following statement.
Regarding claim 9, Tsai teaches all of the features of claim 8.
Tsai further teaches wherein the metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]) (see below for “include a coil that surrounds”) the first cavity (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44), (see below for “a first portion of the coil extends between”) the first (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) and second cavities (Fig. 26 in view of Figs. 4-5; [0022]; left recess in Fig. 26 in view of Figs. 4-5 between layers 42/44), and (see below for “a second portion of the coil extends between”) the first (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44) and third cavities (Fig. 26 in view of Figs. 4-5; [0022]; right recess in Fig. 26 in view of Figs. 4-5 between layers 42/44).
As noted above, Tsai does not expressly disclose “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities). Also, the Applicant has not shown that “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities”. Thus, the claimed “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities” is significant. Thus, the claimed limitation of “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the metal interconnects include a coil that surrounds the first cavity, a first portion of the coil extends between and second cavities, and a second portion of the coil extends between the first and third cavities” is not patentable over Tsai.
Regarding claim 13, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein: the package substrate (102’; Fig. 26; [0046]) include multiple substrate layers (Fig. 26; see [0022-0046]); each substrate layer (see [0039-0046]) includes a metal layer (Fig. 26; see [0022-0046]) (see below for “surrounded by”) the insulation material, the metal layer (Fig. 26; see [0022-0046])including at least one of a trace or a via; the metal layers (Fig. 26; see [0022-0046]) of adjacent substrate layers in contact with each other to form the metal interconnects (42; Fig. 26); and the packaged IC (126; Fig. 26; [0046]) includes (see below for “a first number of”) substrate layers (24; Fig. 26; see [0045]) below the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44), and (see below for “a second number of”) substrate layers (Fig. 26; see [0022-0046]) butting the depression region (Fig. 26 in view of Figs. 4-5; [0022]; recess between layers 42/44), (see below for “the second number being higher than the first number”).
As noted above, Tsai does not expressly disclose “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number). Also, the Applicant has not shown that “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number”. Thus, the claimed “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number” is significant. Thus, the claimed limitation of “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein: the package substrate include multiple substrate layers; each substrate layer includes a metal layer surrounded by the insulation material, the metal layer including at least one of a trace or a via; the metal layers of adjacent substrate layers in contact with each other to form the metal interconnects; and the packaged IC includes a first number of substrate layers below the depression region, and a second number of substrate layers butting the depression region , the second number being higher than the first number” is not patentable over Tsai.
Regarding claim 22, Tsai teaches all of the features of claim 1.
Tsai further teaches wherein the metal interconnects (42; Fig. 26 in view of Fig. 4; [0022]) include (see below for “a coil that surrounds”) the depression region (Fig. 26 in view of Figs. 4-5; [0022]; middle recess in Fig. 26 in view of Figs. 4-5 between layers 42/44).
As noted above, Tsai does not expressly disclose “wherein the metal interconnects include a coil that surrounds the depression region”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the metal interconnects include a coil that surrounds the depression region” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the metal interconnects include a coil that surrounds the depression region). Also, the Applicant has not shown that “wherein the metal interconnects include a coil that surrounds the depression region” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein the metal interconnects include a coil that surrounds the depression region”. Thus, the claimed “wherein the metal interconnects include a coil that surrounds the depression region” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the metal interconnects include a coil that surrounds the depression region” is significant. Thus, the claimed limitation of “wherein the metal interconnects include a coil that surrounds the depression region” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the metal interconnects include a coil that surrounds the depression region” is not patentable over Tsai.
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 extension fee 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 date of this final action.
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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