DETAILED ACTION
Response to Arguments
Applicant’s arguments, see the claim amendment filed Applicant's arguments filed 7/20/26 have been fully considered but they are not persuasive.
It is argued that the claim amendment wherein the chip termination portion is “configured to reduce a field strength” is not taught in Aoki.
Note that there is no structural change claimed, nor discussed in the specification paragraph (0030) that defines how or what reduces field strength. Therefore, since Aoki teaches the same structure it is assumed that this is an inherent feature. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
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 and 21, along with their dependent claims 2-6, 8-10, 13-14, 17-25, 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.
Independent claims 1 and 21 are amended to include the limitation wherein the chip termination portion is “configured to reduce a field strength”. This is only referenced in the Specification in paragraph (0030). This paragraph just states this feature without giving any detail as to how it is “configured to reduce a field strength”. What structural feature does this, how this is accomplished or achieved is not detailed. This lack of a full description of what reduces the field strength in the specification means a skilled artisan cannot determine if the inventor actually has possession of the claimed invention.
Claims 1 and 21, along with their dependent claims 2-6, 8-10, 13-14, 17-25, 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification does not detail or describe how the structure, or what feature of the structure, results in the reduction of field strength. Paragraph 0030 merely mentions this limitation without describing what caused this effect.
Rejection over Aoki et al., JP 2009-272494
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.
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) 1-5, 8, and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoki et al., JP 2009-272494, in view of Lee et al., US 11,037,888.
Regarding claim 1, Aoki (see marked up figures 1-2 below) teaches a chip arrangement, comprising:
a chip 1 comprising a first main surface, wherein the first main surface comprises an active area 2, a chip termination portion 3, and at least one contact pad 6;
a first dielectric layer 10 covering the chip termination portion 3 and at least partially covering the active area 2, and at least partially exposing the at least one contact pad 6; and
a second dielectric layer 11 covering all of the first main surface [paragraph 0015] including covering the first dielectric layer 10 and the at least one contact pad 6.
Though Aoki fails to teach formed by atomic layer deposition, this is a process limitation in a product claim and therefore isn’t given patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Also, though Aoki fails to explicitly teach the chip termination region reduces a field strength, there is no structural feature claimed, nor described in the specification, that provides this feature. Therefore, since Aoki teaches the same structure it is assumed that this is an inherent feature of Aoki. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
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Aoki, which teaches the first dielectric layer 10 only covers a portion of the chip termination portion 3, fails to teach the first dielectric layer covers all of the chip termination portion.
Lee (figure 1) teaches a first dielectric layer 50 covering all of the chip termination portion (region between 30 and edge), at least partially covering the active area 20, and at least partially exposing the at least one contact pad 40.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the configuration of Lee in the invention of Aoki because Lee teaches it is an known equivalent to the structure of Aoki. The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Lee (figure 3) teaches a similar structure to Aoki in that the first dielectric layer 50 does not cover the entire chip termination portion (region between 20 and the edge of the chip 11), and Lee (figure 1) teaches the first dielectric layer 50 does cover all of the chip termination portion (region between 20 and the edge of the chip 11). Therefore a skilled artisan would see the equivalence between the two configurations.
With respect to claim 2, Aoki (figures 1-2) teaches the first dielectric layer 10 has a larger thickness than the second dielectric layer 11.
As to claim 3, Aoki teaches a material of the first dielectric layer [paragraph 0026] is different from a material of the second dielectric layer [paragraph 0041].
In re claim 4, Aoki [paragraph 0026] teaches the first dielectric layer 10 includes or consists of at least one of a group of materials, the group comprising: an organic material; an oxide; and a nitride.
Concerning claim 5, Aoki [paragraph 0041] teaches the second dielectric layer includes or consists of at least one of a group of materials, the group comprising: Al2O3; SiO2; HfO2; ZrO2; TiO2; Ta205; AIN; BN; TiN; TaN; and Si3N4.
Pertaining to claim 8, Aoki (paragraph 0038 teaches equal to or less than 5 nm) teaches a thickness of the second dielectric layer is in a range from about 2 nm to about 100 nm.
In claim 21, Aoki (see marked up figures 1-2 above) teaches a chip arrangement, comprising:
a chip 1 having a first main surface, the first main surface including an active area 2, a chip termination portion 3, and at least one contact pad 6 disposed over the active area 2;
a first dielectric layer 10 covering the chip termination portion 3, a portion of the active area 2, and a portion of the contact pad 6, wherein a portion of the at least one contact pad 6 is exposed from the first dielectric layer 10; and
a second dielectric layer 11 covering the first dielectric layer 10 and the at least one contact pad 6, including covering the portion of the contact pad 6 exposed from the first dielectric layer 10.
Though Aoki fails to teach formed by atomic layer deposition, this is a process limitation in a product claim and therefore isn’t given patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Aoki, which teaches the first dielectric layer 10 only covers a portion of the chip termination portion 3, also fails to teach the first dielectric layer covers all of the chip termination portion.
Lee (figure 1) teaches a first dielectric layer 50 covering all of the chip termination portion (region between 20 and the right side edge), at least partially covering the active area 20, and at least partially exposing the at least one contact pad 40.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the configuration of Lee in the invention of Aoki because Lee teaches it is an known equivalent to the structure of Aoki. The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Lee (figure 3) teaches a similar structure to Aoki in that the first dielectric layer 50 does not cover the entire chip termination portion (region between 20 and the edge of the chip 11), and Lee (figure 1) teaches the first dielectric layer 50 does cover all of the chip termination portion (region between 20 and the edge of the chip 11). Therefore a skilled artisan would see the equivalence between the two configurations.
Also, though Aoki fails to explicitly teach the chip termination region reduces a field strength, there is no structural feature claimed, nor described in the specification, that provides this feature. Therefore, since Aoki teaches the same structure it is assumed that this is an inherent feature of Aoki. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
Regarding claim 22, though Aoki fails to teach the chip termination portion comprises metal rings, it would have been obvious to one of ordinary skill in the art at the time of the invention to use metal rings in the invention of Aoki because metal rings are conventionally known and used as a chip termination portions. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
With respect to claim 23, though Aoki fails to teach the chip termination portion comprises p/n junctions, it would have been obvious to one of ordinary skill in the art at the time of the invention to use p/n junctions in the invention of Aoki because p/n junctions are conventionally known and used as a chip termination portion. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
As to claim 24, though Aoki fails to teach the chip termination portion comprises a graded p-doted area, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a graded p-doted area in the invention of Aoki because a graded p-doted area is conventionally known and used as a chip termination portion. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
In re claim 25, though Aoki fails to teach the chip termination portion comprises regions including polysilicon and/or silicon oxide, it would have been obvious to one of ordinary skill in the art at the time of the invention to use polysilicon and/or silicon oxide in the invention of Aoki because polysilicon and/or silicon oxide are conventionally known and used as a chip terminations portion. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
Rejection over Konrath et al., US 2015/0255362
Claim(s) 1-5, 8, 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konrath et al., US 2015/0255362, in view of Aoki et al., JP 2009-272494.
Regarding claim 1, Konrath (figure 6) teaches a chip arrangement, comprising:
a chip 100 comprising a first main surface, wherein the first main surface comprises an active area 12, a chip termination portion 13 configured to reduce a field strength, and at least one contact pad 2;
a first dielectric layer 31 covering all of the chip termination portion 13, at least partially covering the active area 12, and at least partially exposing the at least one contact pad 2.
Konrath fails to teach a second dielectric layer formed by atomic layer deposition covering all of the first main surface including covering the first dielectric layer and the at least one contact pad.
Aoki (figure 1) teaches a second dielectric layer 11 covering all of the first main surface [paragraph 0015] including covering the first dielectric layer 10 and the at least one contact pad 6.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the second dielectric of Aoki in the invention of Konrath because Aoki teaches prevents a bonding pad from being corroded in the dicing process and capable of ensuring the high shear strength of the connection part in wire bonding (abstract).
Though Aoki fails to teach formed by atomic layer deposition, this is a process limitation in a product claim and therefore isn’t given patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Also, though Aoki fails to explicitly teach the chip termination region reduces a field strength, there is no structural feature claimed, nor described in the specification, that provides this feature. Therefore, since Aoki teaches the same structure it is assumed that this is an inherent feature of Aoki. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
With respect to claim 2, Aoki (figure 1) the first dielectric layer 10 has a larger thickness than the second dielectric layer 11.
As to claim 3, Aoki teaches a material of the first dielectric layer 10 (paragraph 0026) is different from a material of the second dielectric layer 11 (paragraph 0041).
In re claim 4, Konrath (paragraph 0026) and Aoki (paragraph 0026) teach the first dielectric layer (31 or 10) includes or consists of at least one of a group of materials, the group comprising: an organic material; an oxide; and a nitride.
Concerning claim 5, Aoki (paragraph 0041) the second dielectric layer includes or consists of at least one of a group of materials, the group comprising: A1203; SiO2; HfO2; ZrO2; TiO2; Ta205; AlN; BN; TiN; TaN; and Si3N4.
Pertaining to claim 8, Aoki (paragraph 0038 teaches equal to or less than 5 nm) a thickness of the second dielectric layer is in a range from about 2 nm to about 100 nm.
In claim 21,Konrath (figure 6) teaches a chip arrangement, comprising:
a chip 100 having a first main surface, the first main surface including an active area 12, a chip termination portion 14 configured to reduce a field strength, and at least one contact pad 2 disposed over the active area 12;
a first dielectric layer 31 covering all of the chip termination portion 13, a portion of the active area 12, and a portion of the contact pad 2, wherein a portion of the at least one contact pad 2 is exposed from the first dielectric layer 31.
Konrath fails to teach a second dielectric layer formed by atomic layer deposition covering all of the first main surface including covering the first dielectric layer and the at least one contact pad.
Aoki (figure 1) teaches a second dielectric layer 11 covering all of the first main surface [paragraph 0015] including covering the first dielectric layer 10 and the at least one contact pad 6.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the second dielectric of Aoki in the invention of Konrath because Aoki teaches prevents a bonding pad from being corroded in the dicing process and capable of ensuring the high shear strength of the connection part in wire bonding (abstract).
Though Aoki fails to teach formed by atomic layer deposition, this is a process limitation in a product claim and therefore isn’t given patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Also, though Aoki fails to explicitly teach the chip termination region reduces a field strength, there is no structural feature claimed, nor described in the specification, that provides this feature. Therefore, since Aoki teaches the same structure it is assumed that this is an inherent feature of Aoki. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel." Id.
Regarding claim 22, Konrath, which teaches a junction termination or other known termination structures such as field rings and/or field plates (paragraph 0044), fails to specifically teach the chip termination portion comprises metal rings, it would have been obvious to one of ordinary skill in the art at the time of the invention to use metal rings in the invention of Konrath because metal rings are a known equivalent to a junction termination. The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
With respect to claim 23, Konrath, which teaches a junction termination extension (paragraph 0044), fails to specifically teach the chip termination portion comprises p/n junctions, it would have been obvious to one of ordinary skill in the art at the time of the invention to use p/n junctions in the invention of Konrath because p/n junctions are a known equivalent to a junction termination. The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
As to claim 24, Konrath, which teaches a junction termination or other known termination structures such as field rings and/or field plates (paragraph 0044), fails to specifically teach the chip termination portion comprises a graded p-doted area, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a graded p-doted area in the invention of Konrath because a graded p-doted area is a known equivalent to a junction termination. The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
In re claim 25, Konrath, which teaches a junction termination or other known termination structures such as field rings and/or field plates (paragraph 0044), fails to specifically teach the chip termination portion comprises regions including polysilicon and/or silicon oxide, it would have been obvious to one of ordinary skill in the art at the time of the invention to use polysilicon and/or silicon oxide in the invention of Konrath because polysilicon and/or silicon oxide are a known equivalent to a junction termination. The substitution of one known equivalent technique for another may be obvious even if the prior art does not expressly suggest the substitution (Ex parte Novak 16 USPQ 2d 2041 (BPAI 1989); In re Mostovych 144 USPQ 38 (CCPA 1964); In re Leshin 125 USPQ 416 (CCPA 1960); Graver Tank & Manufacturing Co. V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
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.
Any inquiry should be directed to DAVID A ZARNEKE at (571)272-1937. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matt Landau can be reached at 571-272-1731. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID A ZARNEKE/Primary Examiner, Art Unit 2891 8/18/26
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