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 .
Response to Amendment
Applicant’s amendment dated 11/13/2025, in which claims 1, 3-6 were amended, claim 2 was cancelled, claims 7-12, 15-20 were withdrawn, has been entered.
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: claim 1 recites the limitation “the first module side is aligned within a tolerance level of the first substrate side, the second module side is aligned within a tolerance level of the second substrate side”, claim 5 further recites “the tolerance level of the first and second substrate sides matches the monolithic core thickness value to within 40, 20, 10 microns”. However, the specification does not describe the above claimed subject matter. Specifically, the specification does not provide antecedent basis for the claim term “a tolerance level of the first substrate side”, “a tolerance level of the second substrate side” as well as “the tolerance level of the first and second substrate sides matches the monolithic core thickness value to within 40, 20, 10 microns.”
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 3-6, 13-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 recites the limitation “the first module side is aligned within a tolerance level of the first substrate side, the second module side is aligned within a tolerance level of the second substrate side”. However, the specification does not provide any antecedent basis and description for the claim term “a tolerance level of the first substrate side”, “a tolerance level of the second substrate side”. Accordingly, claim 1 and all claims depending therefrom were not in possession of Applicant at the time of filing.
Regarding claim 5, claim 5 further recites “the tolerance level of the first and second substrate sides matches the monolithic core thickness value to within 40, 20, 10 microns”. However, as stated above, the specification does not provide antecedent basis for the claim term “a tolerance level of the first substrate side”, “a tolerance level of the second substrate side” as well as “the tolerance level of the first and second substrate sides matches the monolithic core thickness value to within 40, 20, 10 microns.” Accordingly, claim 5 was not in possession of Applicant at the time of filing.
Claims depending from the rejected claims noted above are rejected at least on the same basis as the claim(s) from which the dependent claims depend.
Applicant is remined that MPEP 2163 (I)(B) requires “newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure” thus, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation’ ‘in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP §§ 714.02 and 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 (“If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-6, 13-14 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.
Regarding claim 1, claim 1 recites “the first module side is aligned within a tolerance level of the first substrate side, the second module side is aligned within a tolerance level of the second substrate side.” However, the specification does not provide any standard for measuring “a tolerance level” thus the scope of the claim is unclear. Further, a claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). See MPEP 2173.05(b).
Claim 1 further recites the limitation “the device module includes a first and second one of silicon-based passive or silicon-based active device components.” The limitation is confusion.
Claim 1 further recites the limitation "the first and second device components". There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the first and second device components” is the same or different from “a first and second one of silicon-based passive or silicon-based active device components.”
Claim 1 further recites “the first side of the device module” and “the second side of the device module.” There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the first side of the device module” and “the second side of the device module” are the same or different from “the first module side” and “the second module side.”
Claim 1 further recites “the first silicon-based passive or active device component” and “the second silicon-based passive or active device component.” There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the first silicon-based passive or active device component” and “the second silicon-based passive or active device component” are the same or different from “a first and second one of silicon-based passive or silicon-based active device components.”
It is noted that “The use of a confusing variety of terms for the same thing should not be permitted.” See MPEP 608.01 (o). “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained.” See MPEP 2173.05 (a).
Regarding claim 6, claim 6 recites “the cavity” in line 9. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 13, claim 13 recites “the one or more silicon-based passive or active device component.” There is insufficient antecedent basis for this limitation in the claim.
Claims depending from the rejected claims noted above are rejected at least on the same basis as the claim(s) from which the dependent claims depend.
Appropriate correction is required.
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 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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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893
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