Reissue – Final Rejection
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
Patent claims 1-20 as amended and new claims 21-29 are pending.
Claims 30-63 are withdrawn.
Improper Amendment
The amendment filed 15 January 2026 proposes amendments to the claims that do not comply with 37 CFR 1.173(b), which sets forth the manner of making amendments in reissue applications.
Specifically, line 2 of claims 1, 2, and 28 contain strike-through. Strike-through is not permitted in reissue. Cancelation of subject matter is shown by enclosing said subject matter in single brackets.
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(s) 1-4, 13-16, and 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0153522 Hwang et al. (hereinafter Hwang) in view of Tong US 7,109,092 (hereinafter Tong).
With respect to claims 1-3, 18, and 21, Hwang teaches a system configured to select a first element 32 from a plurality of singulated elements on a surface of a film 42 which supports the plurality of singulated elements, the first element 32 having a bonding surface 35 configured to bond to a support structure 12; positioning the
film 42 adjacent the support structure by using optical aligning tool 52 such that the surface of the film faces a support surface 13 of the support structure 12 and is positioned laterally relative to the support structure such that the first element 32 is
PNG
media_image1.png
547
637
media_image1.png
Greyscale
PNG
media_image2.png
503
720
media_image2.png
Greyscale
aligned with a first location of the support structure. See Figures 9 and 10; para [0041].
Next, a release assembly 53 applies a force to at least the film 42 in a direction nonparallel to the surface of the film to cause the first element to be transferred from the
film to the support structure, such that the first element is removed from the film. See Fig.10; paras [0042-0043].
As to a control system configured to send instructions in order to control the system components described above, such is implied in use of the optical aligning tool 52 and release assembly 53, both of which would have required a control system to operate properly. Further, a control system would have been required to achieve accurate alignment of the first and second wafer assemblies, as described in paras [0040-0041]. A POSITA would understand that semiconductor chip manufacturing requires precise control with narrow tolerances achievable only through use of a programmable control system. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Hwang is silent to the bonding surface 35 including a nonconductive layer and a plurality of conductive contacts and thus, doesn’t teach a control system configured to align and bond first and second elements having a nonconductive layer and a plurality of conductive contacts.
PNG
media_image3.png
228
884
media_image3.png
Greyscale
Tong discloses a system for room temperature covalent wafer bonding wherein a first element 140 having a first bonding surface comprising a nonconductive layer 141 and a first plurality of conductive contacts 142 is aligned with and contacts a second element 143 having a second bonding surface comprising a second nonconductive layer 144 and a second plurality of conductive contacts 145. See col.2, lines 62-64; col.11, lines 42-57; Figs. 14A-14C.
Tong teaches covalent bonding as an improvement over the adhesive bonding disclosed by Hwang. For example, Tong notes that adhesive bonding “usually operates at elevated temperatures and suffers from thermal stress, out-gassing bubble formation and instability of the adhesive, leading to reduced yield in the process and poor reliability over time. The adhesive may also be incompatible with typical semiconductor manufacturing processes. Moreover, adhesive bond [sic] is usually not hermitic.” See col.1, line 54 to col.2, line 3. Tong further describes covalent bonding as “not prone to introduce stress and inhomogeneity as in the adhesive bonding” (col.2, lines 4-8).
It would have been obvious to a POSITA to modify the system of Hwang such that it is configured to align singulated elements for covalent bonding in the manner of Tong, in order to eliminate the problems associated with adhesive bonding as disclosed by Tong. In doing so, the covalent bonding would be achieved without an intervening adhesive. It would have been within the skill of one in the art to adjust the aligning tool and release mechanism of Hwang for covalent/direct bonding of the singulated elements of Tong because it has been held that known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2143 I F. In this instance, the variations necessary to use the system of Hwang for alignment of elements for covalent, versus adhesive bonding, are predictable and involve only adjustment/programming of the controller. Further, as set forth above, a control system is a necessary element in the system of Hwang and would have been capable of being adjusted/programmed to align any size/type of elements.
As to claim 4 the release assembly 53 of Hwang is a plunger, i.e. a part that moves up and down.
With respect to claim 13, the support structure 12 of Hwang comprises a wafer or die stack. See para [0034].
As to claim 14, the steps of aligning and bonding of Hwang are repeated. See para [0046].
With respect to claims 15 and 16, Hwang discloses that another chip may be stacked on chip 32 to form a chip stack. See para [0034]. When doing so, it would have been obvious to use a covalent bonding technique as disclosed by Tong, instead of adhesive for the reasons discussed above.
As to claim 19, Fig. 2 of Hwang shows that the film 42 is wider than at least two singulated elements.
With respect to claim 20, although Figures 9 and 10 show the support structure as individual chips 12, Hwang additionally teaches that the support structure may be a single wafer, i.e. a “web”, that is singulated after the stacking step. See para [0049].
Claim(s) 5 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang and Tong as applied to claim 3 above, and further in view of US 2007/0101572 to Kabeshita et al. (hereinafter Kabeshita).
PNG
media_image4.png
540
562
media_image4.png
Greyscale
The release assembly 53 of Hwang does not include one or more nozzles to supply a fluid to a backside of the film. Kabeshita teaches a release assembly including a plunger pin 45 and a plurality of nozzles 43 which blow compressed air such that “a
thin atmospheric layer to be formed between the sheet contact surface 42” and the bottom surface of the wafer sheet 50. See para [0136]. Kabeshita discloses that the thin layer of air permits movement of the holding section 41 “without damaging the surface of the water sheet 50.” As the addition of nozzles to the apparatus of Hwang would likewise permit movement of ring frame 20 during alignment without causing damage to tape 22.
As to the limitation “wherein the fluid…” in claim 22, the “fluid” is a material worked on by the apparatus and does not further limit the structure of the system/apparatus. "Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claim(s) 11, 12, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang and Tong as applied to claims 1 or 14 above, and further in view of US 2009/0085217 to Knickerbocker et al. (hereinafter Knickerbocker).
As to claims 11 and 12, the combination of Hwang and Tong is silent as to the control system being configured to select a first known good die. Knickerbocker discloses a system which relies upon known good die testing, such that circuits are pre-tested and labeled as a “known good die” and only then are applied to semiconductor chips and/or chip stacks. See para [0097]. It would have been obvious to use the control system to apply the same pre-testing in Hwang with Tong so as to avoid unnecessary scrapping of good substrates caused by attaching bad dies thereto.
PNG
media_image5.png
267
1006
media_image5.png
Greyscale
With respect to claim 17, Hwang teaches a stack of more than three chips (para [0010]) but does not disclose the control system is configured to position first and second chips at different locations on a wafer, and fill the gap therebetween with a filling material. Knickerbocker teaches stacking microchips 902 at different locations on a wafer and filling the gap therebetween with a filling material 950. See Figure 9C; paras [0094-0095]. Knickerbocker discloses that it is conventional to incorporate many different types of circuits on the same chip and to include as many circuits as possible on the same chip. See paras [0006-0007]. For this reason, it would have been obvious to place the chips of Hwang as modified by Tong both side-by-side and stacked, as taught by Knickerbocker, in able to maximize the number of chips on a single wafer. As to filling the gaps with a filling material, Knickerbocker discloses that doing so provides “mechanical and reliability and thermal enhancements.” See para [0068]. It would have been obvious to do the same in Hwang with Tong for the same reason.
Claim(s) 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang in view of Tong and Knickerbocker.
Hwang and Tong are relied upon as set forth above.
With respect to claim 25, Hwang is silent as to the control system being configured to select a first known good die. Knickerbocker discloses a system which relies upon known good die testing, such that circuits are pre-tested and labeled as a “known good die” and only then are applied to semiconductor chips and/or chip stacks. See para [0097]. It would have been obvious to apply the same pre-testing to Hwang so as to avoid unnecessary scrapping of good substrates caused by attaching bad dies thereto.
As to claim 26, as set forth above Tong discloses covalent wafer bonding as an improvement over the adhesive bonding disclosed by Hwang. Tong notes that adhesive bonding “usually operates at elevated temperatures and suffers from thermal stress, out-gassing bubble formation and instability of the adhesive, leading to reduced yield in the process and poor reliability over time. The adhesive may also be incompatible with typical semiconductor manufacturing processes. Moreover, adhesive bond is usually not hermitic.” See col.1, line 54 to col.2, line 3. Tong further describes covalent bonding as “not prone to introduce stress and inhomogeneity is in the adhesive bonding” (col.2, lines 4-8). It would have been obvious to modify the system of Hwang such that it is configured to align singulated elements for covalent/direct bonding as disclosed by Tong in order to eliminate the problems associated with adhesive bonding as disclosed by Tong. It has been held that known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2143 I F. In this instance, the variations necessary to use the system of Hwang for alignment of elements for covalent, versus adhesive bonding, are predictable and involve only adjustment/programming of the controller.
As to claim 27, Fig. 2 of Hwang shows that the film 42 is wider than at least two singulated elements.
Claim(s) 28 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang in view of Knickerbocker and Tong.
Hwang and Tong are relied upon as set forth above.
As to claim 28, Hwang is silent as to the control system being configured to select a first known good die. Knickerbocker discloses a system which relies upon known good die testing, such that circuits are pre-tested and labeled as a “known good die” and only then are applied to semiconductor chips and/or chip stacks. See para [0097]. It would have been obvious to apply the same pre-testing to Hwang so as to avoid unnecessary scrapping of good substrates caused by attaching bad dies thereto.
Hwang does not teach the first known good die is directly bonded without an intervening adhesive. Tong discloses covalent wafer bonding as an improvement over the adhesive bonding disclosed by Hwang. Tong notes that adhesive bonding “usually operates at elevated temperatures and suffers from thermal stress, out-gassing bubble formation and instability of the adhesive, leading to reduced yield in the process and poor reliability over time. The adhesive may also be incompatible with typical semiconductor manufacturing processes. Moreover, adhesive bond is usually not hermitic.” See col.1, line 54 to col.2, line 3. Tong further describes covalent bonding as “not prone to introduce stress and inhomogeneity is in the adhesive bonding” (col.2, lines 4-8). It would have been obvious to modify the system of Hwang such that it is configured to align singulated elements for covalent/direct bonding as disclosed by Tong in order to eliminate the problems associated with adhesive bonding as disclosed by Tong. It has been held that known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2143 I F. In this instance, the variations necessary to use the system of Hwang for alignment of elements for covalent, versus adhesive bonding, are predictable and involve only adjustment/programming of the controller.
With respect to claim 29, the support structure 12 of Hwang comprises a wafer or die stack. See para [0034].
Allowable Subject Matter
Claims 6-10, 23, and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: As to claims 6 and 7, the compressed air nozzles 43 of Kabeshita are all the same width and there is no teaching or suggestion to use a wider nozzle at the first end or in a central region. Claims 23 and 24 are likewise allowable as depending from claims 6 or 7, and including all the limitations thereof.
As to claim 8, the release assemblies of Hwang and Kabeshita do not teach or suggest a collet having a plurality of first fingers spaced apart by one or more first gaps. Claims 9 and 10 are likewise allowable as depending from claim 8, and including all the limitations thereof.
Response to Arguments
Applicant's arguments filed 15 January 2026 have been fully considered but they are not persuasive.
Patent Owner argues Hwang fails to disclose “a control system configured to cause the apparatus to substantially align the first bonding surface of the first element to a second bonding surface of a second element, the second bonding surface including a second nonconductive layer and a second plurality of conductive contacts” or a control system configured to cause “the first bonding surface of the first element to be directly bonded to the second bonding surface of the second element disposed on the support structure, wherein the directly bonding comprises bonding between the first nonconductive layer and the second nonconductive layer and bonding between the first plurality of conductive contacts and the second plurality of conductive contacts without an intervening adhesive” as recited in Claim 1. Response, pg.23. See also pg. 29.
The Examiner has acknowledged that the system of Hwang is silent to bonding elements having a nonconductive layer and a plurality of conductive contacts on the bonding surface. The system of Hwang is essentially the same structurally as that claimed and is capable of being used for the covalent/direct bonding of singulated elements. However, Hwang is modified by Tong which teaches covalent/direct bonding of elements. Tong incorporates by reference US 10/359,608 which issued as US 6,962,835. This patent discloses that the elements are aligned prior to direct bonding. See Abstract; col.3, lines 44-63; col.4, lines 4-7. Tong further teaches that wafer direct bonding is a “highly flexible and manufacturable technology” (col.2, lines 14-16) for forming bonded chip stacks. Thus, a POSITA would understand that the elements in Tong must be aligned prior to bonding and a POSITA of semiconductor manufacturing would understand that alignment is achieved via a programmable controller. As set forth above in the rejection, a POSITA would understand that semiconductor chip manufacturing requires precise control with narrow tolerances achievable only through use of a programmable control system. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Further, a POSITA would not have expected to experience any particular difficulties when modifying the transfer system of Hwang for a covalent bonding method because wafer direct binding is a “highly flexible and manufacturable technology.” It has been held that known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2143 I F. In this instance, the variations necessary to use the system of Hwang for alignment of elements for covalent, versus adhesive bonding, are predictable and involve only adjustment/programming of a controller, which is within the purview of a POSITA.
As to the claimed step of “causing” the first bonding surface to be directly bonded to the second bonding surface, the patent under reissue (US 10,896,902) makes clear that this is achieved merely by contacting one singulated element with another. See col.17, lines 24-31. Thus, when using the system of Hwang to align and bond the elements 140,143 of Tong, direct/covalent bonding will occur because the system of Hwang causes contact between two surfaces for bonding.
On page 25 of the Response, Patent Owner submits that Tong does not disclose the claimed control system for selectively positioning the elements and release assembly. However, a system for selectively positioning the singulated elements and for controlling the release assembly is disclosed by the primary reference to Hwang. A POSITA would have been motivated to combine Hwang with Tong for the reasons outlined above and when doing so, would have made the necessary adjustments to appropriately control the alignment and release mechanisms to achieve covalent/direct bonding of the singulated elements. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). See MPEP 2144 II.
Patent Owner argues on page 26 of the Response that the skilled artisan would not have combined Hwang with Tong because “Hwang’s edge-pad configuration…is designed for adhesive-based bonding” whereas “Tong discloses an adhesive-free, room temperature bonding process.” As set forth in the rejection, Tong provides motivation to substitute the adhesive bonding of Hwang with the covalent bonding of Tong. Tong teaches covalent bonding as an improvement over the adhesive bonding disclosed by Hwang. For example, Tong notes that adhesive bonding “usually operates at elevated temperatures and suffers from thermal stress, out-gassing bubble formation and instability of the adhesive, leading to reduced yield in the process and poor reliability over time. The adhesive may also be incompatible with typical semiconductor manufacturing processes. Moreover, adhesive bond [sic] is usually not hermitic.” See col.1, line 54 to col.2, line 3. Tong further describes covalent bonding as “not prone to introduce stress and inhomogeneity as in the adhesive bonding” (col.2, lines 4-8). Thus, the skilled artisan would be motivated to combine Tong with Hwang.
Further, Patent Owner has not provided any evidence why a POSITA would be unable to use the system of Hwang to achieve covalent bonding in the manner of Tong. Patent Owner suggests the combination of Hwang with Tong “would render Hwang inoperable” (page 26) because Hwang relies on residual UV tape for die bonding. However, when combined with Tong the adhesive is no longer needed or desirable. Hwang is used to align dies for bonding using the covalent method of Tong. Thus, Hwang is still operable for aligning two elements for bonding. Moreover, Patent Owner asserts that “Hwang’s edge-pad configuration is optimized for adhesive stacking and later interconnection, not for fine-pitch contact-array hybrid bonding during transfer” (pages 26 and 27). As set forth in the rejection, the combination involves the use of Hwang’s alignment system for covalently bonding the elements of Tong. Hwang’s edge-pad configuration is not being bonded and even if it were, Patent Owner has failed to provide evidence that the edge-pad chips of Hwang are incapable of being covalently bonded in the manner of Tong. Furthermore, there is no requirement for either Hwang or Tong to teach fine-pitch contact-array hybrid bonding, as the claims are not directed to such. The instant claims require only a bonding surface with a nonconductive layer and a plurality of conductive contacts (i.e. direct/covalent bonding) which is disclosed by Tong.
On pages 29-30 of the Response, Patent Owner argues that the teachings of Knickerbocker are silent in regard to the claimed control system. However, as set forth in the rejection and above, the combination of Hwang with Tong is relied upon for the control system. Knickerbocker is relied upon only for the teaching of selecting a first known good element.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,898,902 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH MCKANE whose telephone number is
(571) 272-1275. The examiner can normally be reached on Mon-Thurs; 6:30 am -
4:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisors, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of any application may be obtained from the Patent Center at https://patentcenter.uspto.gov.
Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEONARDO ANDUJAR/ Primary Examiner, Art Unit 3991
/Patricia L Engle/ SPRS, Art Unit 3991
Prosecution Insights