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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-14 in the reply filed on 10/21/2025 is acknowledged.
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 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, 11, 14 (and claims 2-10, 12-13 dependent therefrom) 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 describes “a semiconductor package” with comprises “a cap”. These terms are referring to a single finished device such as seen in fig.2/8 of the application. Claim 1 goes on to state the presence of “a spacer wafer…perforated with a plurality of through holes”. The originally filed specification discloses use of a spacer wafer with a plurality of holes from which a single cap device, for a single semiconductor package, is eventually singulated (see fig.5-8, [0062-0070). Claim 1 is therefore outlining a final product of a semiconductor package with a cap while also claiming the presence of the spacer wafter with a plurality of holes which does not exist in the final product. In other words, claim 1 is mixing components of the final product with components of an intermediate product which is not found in the final product. The Applicant was therefore not clearly in possession of the claim invention at the time of filing.
Claim 11, describing the wafers to have a circular shape not seen in the final product, and claim 14, describing the shape of the plural holes, are rejected for similar reasoning to claim 1 above, as it is not clear the Applicant was in possession of the claimed invention at the time of filing.
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, 9-11 and 14 (and claims 2, 4-8, 10-13 dependent therefrom) 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.
Claims 1, 11 and 14 contain subject matter which is a mixture of components from the final product and an intermediate product which is not part of the final product leading to a conflict or inconsistency between the claimed subject matter and the specification which makes these otherwise definite claims take on an unreasonable degree of uncertainty, making them indefinite (see MPEP 2173.03).
For purposes of examination, claims 1, 11 and 14 will be examined with respect to components of the final product such that claim 1 is understood to describe a spacer wafter with a single hole, claim 11 is understood to describe the window wafers to have a same shape, and claim 14 is understood to describe a single hole with the particular shape options.
Claim 3 depends from claim 2 which states the AR coating options, while claim 3 further defines features of the textured option. The manner in which claim 3 is written does not require the presence of the textured option, but rather simply further defines it. This makes the scope of claim 3 indefinite as if claim 2 is met by another option, such as a filter coating, it is not clear how claim 3 then further limits claim 2 as the textured option was not selected.
For purposes of examination, claim 3 is understood to be read as “wherein the antireflective surface comprises the textured surface and wherein the textured surface comprises…” in order to positively state the selection of the textured surface.
The term “substantially similar” in claims 9 and 10 is a relative term which renders the claims indefinite. The term “substantially similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For purposes of examination, the term is understood to be “within 10%”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 depends from claim 2 which states the AR coating options, while claim 3 further defines features of the textured option. The manner in which claim 3 is written does not require the presence of the textured option, but rather simply further defines it. Therefore, it is not clear how claim 3 then further limits claim 2 if the textured option is not selected from claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 6-14 is/are rejected under 35 U.S.C. 102a1/2 as being anticipated by Miyata (US 2021/0091532).
With respect to claim 1, Miyata discloses a semiconductor package (fig.5-6), comprising: a cap (fig.5-6 #40a-c) comprising: a first window wafer (fig.5a #40a) comprising a first face (fig.5a #40a right side) and opposing second face (fig.5a #40a left side), wherein the first face and second face are mutually parallel (as seen in fig.5a/6, [0042]), and wherein the first face and/or second face includes an antireflective surface ([0042]); a second window wafer (fig.5a #40c) comprising a first face (fig.5a #40c left side) and opposing second face (fig.5a #40c right side); and a spacer wafer (fig.5a/b #40b) that is perforated with a plurality of through-holes (fig.5-6 C-shaped #40b constitutes through hole, see 112s above; also note fig.7+ for intermediate product containing multiple through holes) extending from a first face of the spacer wafer (fig.5a #40b left side) to an opposing second face of the spacer wafer (fig.5a #40b right side), wherein the spacer wafer is disposed between the first window wafer and the second window wafer (fig.5-6) with the first window wafer bonded to the first face of the spacer wafer and the second window wafer bonded to the second face of the spacer wafer (as defined above), wherein the first window wafer, second window wafer, and spacer wafer together define a cavity in the cap (fig.5-6 empty central region); and an edge-emitting laser diode (fig.5a #10, [0047]) disposed on a submount (fig.5a #30) and configured to direct a laser beam at normal incidence to the first face of the first window wafer (fig.5a see arrow), wherein the cap is mounted on the submount with the edge-emitting laser diode enclosed in the cavity (fig.5-6).
With respect to claim 2, Miyata discloses the antireflective surface comprises an antireflective coating ([0042]), a filter coating, or a textured surface configured to form an antireflective topography.
With respect to claim 4, Miyata discloses the first face of the first window wafer is disposed proximal to the edge-emitting laser diode (fig.5a #40a right side near laser) and includes the antireflective surface ([0042]).
With respect to claim 6, Miyata discloses the first window wafer and/or the second window wafer is a dual side polished wafer ([0062] there are two sides, left/right, and they are smooth; noting the manner in which the smooth sides are produced, “polished”, is understood to be a product-by-process limitation, where the product is limited only be the structure implied by the process; see MPEP 2113).
With respect to claim 7, Miyata discloses the first window wafer comprises DSP fused silica, glass ([0066]), sapphire, Borofloat 33 glass, or silicon.
With respect to claim 8, Miyata discloses the first and second window wafers each have a thickness of 0.2 mm to 0.8 mm ([0072, 76]) and the spacer wafer has a thickness of 0.5 mm to 3.5 mm ([0071]).
With respect to claim 9, Miyata discloses the spacer wafer is configured to have a substantially similar coefficient of thermal expansion (CTE) as the first and second window wafers ([0066]).
With respect to claim 10, Miyata discloses the spacer wafer is comprised of substantially the same material as the first window wafer and/or the second window wafer ([0066]).
With respect to claim 11, Miyata discloses the first window wafer, second window wafer, and spacer wafer each have a circular shape with a diameter between 150 mm and 200 mm (see 112s above, fig.5-6 #40a/40b have same shape).
With respect to claim 12, Miyata discloses the spacer wafer comprises Invar, silicon, Kovar, fused silica, glass ([0066]), or sapphire.
With respect to claim 13, Miyata discloses the submount is made of ceramic ([0050]).
With respect to claim 14, Miyata discloses the plurality of through- holes are rectangular ([0042]), triangular, or circular.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyata in view of Hobbs et al. (“High Laser Damage Threshold Surface Relief Micro-Structures for Anti-Reflection Applications”, Applicant submitted prior art).
With respect to claim 3, Miyata teaches the device outlined above, but does not teach the anti-reflection means to be a textured surface which comprises a motheye topography in which textured areas are formed in a matrix of discrete rectangular areas. Hobbs teaches AR textured surfaces (abstract) which include motheye topography (see section 2) and formed as a matrix of discrete rectangular areas (see fig.1 SEM where the tops of the peaks resemble rectangles). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the device of Miyata to make use of the textured surface type of Hobbs in place of the AR coating in order to improve damage thresholds within the device (Hobbs, abstract).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyata in view of Miura et al. (US 2021/0135426).
With respect to claim 5, Miyata discloses the second face of the first window wafer is disposed distal to the edge-emitting laser diode (fig.5a #40a left side far from laser) and an array of lenses or microlenses on the cap ([0047]). Miyata does not specify the lenses are bonded to the window wafer. Miura teaches a related laser package (fig.13) which includes multiple lens (fig.13a #40) attached to a side of the package and the use of bonding to attach the lenses ([0089]). It would have been obvious to one of ordinary skill in the art before the filing of the instant application to adapt the use of multiple lenses on the cover of Miyata to have those lenses be bonded to the first window wafer as Miura has demonstrated such a configuration and would allow for a more integrated, stable device while making use of a secure attachment means.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Please see the include pto892 form for a list of references related to at least claim 1.
US 2019/0035700 noted as being particularly relevant.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TOD THOMAS VAN ROY whose telephone number is (571)272-8447. The examiner can normally be reached M-F: 8AM-430PM.
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/TOD T VAN ROY/Primary Examiner, Art Unit 2828