Prosecution Insights
Last updated: July 17, 2026
Application No. 18/132,324

PROCESSES AND APPLICATIONS FOR CATALYST INFLUENCED CHEMICAL ETCHING

Non-Final OA §102§103§112
Filed
Apr 07, 2023
Priority
Mar 29, 2021 — provisional 63/167,462 +4 more
Examiner
PETERSON, ERIK T
Art Unit
2898
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Board of Regents of the University of Texas System
OA Round
1 (Non-Final)
77%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
89%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
279 granted / 361 resolved
+9.3% vs TC avg
Moderate +12% lift
Without
With
+11.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
40 currently pending
Career history
403
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
69.0%
+29.0% vs TC avg
§102
10.4%
-29.6% vs TC avg
§112
12.3%
-27.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 361 resolved cases

Office Action

§102 §103 §112
DETAILED ACTION This action is responsive to the application No. 18/132,324 filed on April 7, 2023. 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 Species I and Modification I-A, corresponding to claims 1-17, in the reply filed on January 14, 2026, is acknowledged. Claims 18-84 are withdrawn from consideration. Information Disclosure Statement Acknowledgement is made of Applicant’s Information Disclosure Statements (IDS) form PTO-1449. The IDSs have been considered. Drawings The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the metal pads or vias on one or more of said first and second bonding surfaces interspersed with said recesses must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 1-17 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 recites a volatile fluid is “deployed between” said first and second bonding surfaces. While this statement appears in the abstract, the summary, and the claims, there are no further details provided in the written description regarding how a fluid is actually deployed between the two bonding surfaces. This limitation is understood to mean the two surfaces must be positioned such that the fluid is deployed, i.e. moved into place, delivered, or injected, etc., between the two surfaces. This appears to require an undisclosed, and unnecessarily complex precision fluid delivery process when the same end result can be accomplished by simply dispensing a fluid on one surface and then positioning the second surface over/onto the fluid. Applicant provides no specific details with respect to how a fluid is deployed between the two bonding surfaces. Also see §112(b) rejection below as it is unclear if this is Applicant’s intent. 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 1-17 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. Claim 1 recites “precision” alignment, rendering the claim indefinite since the claimed “precision” is a subjective term of degree, not defined in the claims or specification. It is not clear what Applicant regards as “precision” or to what degree of “precision” is required or how the term “precision” is intended to be interpreted. The term “precision” may refer to the ability of a measurement or calculation to be consistently reproduced or to the accuracy and exactness of a quality or condition. Next, the claimed alignment is unclear as to what feature(s) are being aligned with one another and where or how, e.g. aligned parallel, aligned edge(s), corner(s), centerline, some form of offset alignment, alignment marks, trenches, pads, vertically, horizontally, rotationally, etc. Since the alignment is unclear, one would not know when infringement occurs since “surfaces” may be considered “aligned” a number of different ways. Next, the recited “deployed between” is confusing because there is no detailed discussion in the specification regarding the claimed volatile fluid deployed between said bonding surfaces. This is understood to mean the two surfaces must be positioned such that the fluid is deployed, i.e. moved into place, delivered, or injected, etc., between the two surfaces. This appears to require an undisclosed, and unnecessarily complex precision fluid delivery process when the same end result can be accomplished by simply dispensing a fluid on one surface and then positioning the second surface over/on the fluid. It is not clear if Applicant’s intent is the literal interpretation discussed above or if Applicant simply means the fluid is simply located between the two surfaces (not requiring deploying the fluid into a gap between two surfaces). For the purpose of examination, this will be treated as a fluid located between the bonding surfaces, regardless of the process sequence implied by the use of deployed. Claims 3-5 recite said overlay precision, lacking antecedence. Claim 3 recites using “a nanometer overlay metrology scheme”. Since there is no “nanometer overlay metrology scheme” expressly defined in the specification or claims, the metes and bounds are unclear. There is no standardized nanometer overlay metrology scheme, the specification does not define this scheme, one would not know what is required or excluded in such a scheme, therefore one would be unable to determine when infringement occurs. For the purpose of examination, any “overlay scheme” is understood to meet the limitation. Claim 4 recites precision overlay between said four or more die and said target substrate is achieved using “a moiré metrology scheme”. Since there is no “moiré metrology scheme” expressly defined in the specification or claims, the metes and bounds are unclear. There is no standardized moiré metrology scheme, the specification does not clearly define this scheme, one would not know what is required or excluded in such a scheme, therefore one would be unable to determine when infringement occurs. Also, it is unclear how Applicant uses a moiré metrology scheme to achieve precision overlay with respect to the surfaces when there are no moiré patterns/marks/gratings present in the elected embodiment nor is there any disclosure of using a moiré scheme in conjunction with the claimed fluid. For the purpose of examination, any “overlay scheme” is understood to meet the limitation. Claim 5 recites using “an infrared moiré metrology scheme”. Since there is no “infrared moiré metrology scheme” expressly defined in the specification or claims, the metes and bounds are unclear. There is no standardized infrared moiré metrology scheme, the specification does not define this scheme, one would not know what is required or excluded in such a scheme, therefore one would be unable to determine when infringement occurs. Also, it is unclear how Applicant uses a moiré metrology scheme to achieve precision overlay with respect to the surfaces when there are no moiré patterns/marks/gratings on the surfaces nor is there any disclosure of using a moiré scheme in conjunction with the claimed fluid. For the purpose of examination, any “overlay scheme” is understood to meet the limitation. Claim 7 recites the bonding comprises… “self-assembly”. It is unclear how bonding comprises self-assembly or what type of self-assembly is used in the claimed bonding since the specification provides no guidance and there are many different types of self-assembly, e.g. self-assembled monolayers, fluidic self-assembly, etc. The only disclosure of self-assembly is found in ¶630 of the published application with respect to patterning a catalyst in an unrelated etching process. 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 2 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 2 recites said overlay is performed to achieve a result without reciting any additional method step or process that would provide the result. The “precisely overlaid” is already performed according to the independent claim, therefore claim 2 does not further limit claim 1. 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 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. Claims 1-7, 9, and 14-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tung et al. (US 2020/0058614). (Re Claim 1) Tung teaches a method for bonding with precision alignment, the method comprising (see Figs. 1A-1H and ¶¶19-54): bonding a first bonding surface with a second bonding surface, wherein features on said first and second bonding surfaces are precisely overlaid during said bonding (Figs. 1G-1H); performing an etch on one or more of said first and second bonding surfaces to create recesses (116t) in one or more of said first and second bonding surfaces (Figs. 1B-1D and ¶¶29-30); and enabling precision alignment of said first and second bonding surfaces by a volatile fluid (130) deployed between said first and second bonding surfaces (Fig. 1G), wherein said recesses enable removal of said volatile fluid from a bonding interface during and after said bonding (recesses 116t are deemed enabling as claimed since any fluid 130 displaced from the bonding interface can end up in the adjacent recesses). (Re Claim 2) wherein said overlay is performed to achieve one of the following: sub-10 nm, sub-50 nm, sub-100 nm, sub-200 nm, and sub-500 nm overlay precision (see §112 discussion above, the precision and alignment are not clear, nor does claim 2 further limit the method of claim 1, in Fig. 1H the bonding surfaces are aligned: parallel, 0 deg, contacting, coplanar sidewalls, along a centerline, etc., multiple interpretations). (Re Claim 3) wherein said overlay precision is achieved using a nanometer overlay metrology scheme (see §112 discussion above, the schemes are undefined, overlay scheme shown in Fig. 1G). (Re Claim 4) wherein said overlay precision is achieved using a moire metrology scheme (see §112 discussion above, the schemes are undefined, overlay scheme shown in Fig. 1G). (Re Claim 5) wherein said overlay precision is achieved using an infrared moire metrology scheme (see §112 discussion above, the schemes are undefined, overlay scheme shown in Fig. 1G). (Re Claim 6) wherein said volatile fluid comprises one or more of the following: an aqueous solution, a hydroxyl group containing material, an alcohol, isopropyl alcohol, an acid, a base, water, citric acid, an acid, an adhesive, UV-curable adhesive, light switchable adhesive, light-to-heat-conversion adhesive, a spin-on dielectric, a silsesquioxane, and a hydrogen silsesquioxane based spin-on dielectric (¶¶32-33). (Re Claim 7) wherein said bonding comprises one or more of the following: direct bonding, SiO2-SiO2 bonding, covalent bonding, fusion bonding, hybrid bonding, adhesive bonding, self-assembly, temporary bonding, and permanent bonding (Fig. 1H, the bonding disclosed meets at least: direct, SiO2-SiO2, hybrid, temporary, and permanent, ¶¶32-53). (Re Claim 9) further comprising: dispensing said volatile fluid near edges of one of said first and second bonding surfaces (Fig. 1E, 130 is near edges, Fig. 1G, 130 is near edges). (Re Claim 14) wherein said recesses are present within one or more of the following distances from an edge of a die: sub-5 µm, sub-10 µm, sub-20 µm, sub-50 µm, sub-100 µm, sub-200 µm, sub-500 µm, and sub-1 mm (see Fig. 1H, the recesses are coplanar with the sidewalls/edges of the die). (Re Claim 15) wherein metal pads or vias present on one or more of said first and second bonding surfaces are interspersed with said recesses (Fig. 1H, metal pads 118/148 between recesses 116t). (Re Claim 16) wherein said recesses have sufficient depth that said volatile fluid does not completely fill said recesses during said bonding (see Figs. 1G-1H, fluid 130 does not completely fill 116t). (Re Claim 17) wherein said bonding is performed in a face-to-face, face-to-back, back-to-face, or back-to-back manner (since no faces or backs are defined, Fig. 1H may be construed as all of the above). 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 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tung et al. as applied above, and further in view of Luce et al. (US 2010/0248424) and Liu et al. (US 2014/0011324). (Re Claim 12) wherein an initial contact is created by a backpressure applied on one or more of said first and second bonding surfaces, wherein an edge dispensed fluid enables said initial contact. Tung creates an initial contact and the fluid is dispensed to the edges and thereby enabled. Tung discloses heat, however is silent regarding applying pressure. A PHOSITA desiring to make and use Tung’s direct/hybrid bonding process would be motivated to look to related art to teach possible modifications and improvements. Related art from Luce teaches a back pressure may be applied to squeeze out the liquid (¶38). Related art from Liu teaches direct/hybrid bonding is performed by applying both heat and pressure (¶33). This is known to improve the strength and quality of the bonding. A PHOSITA would find it obvious to apply a backpressure to assist in fluid removal while improving the bonding. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tung et al. as applied above, and further in view of Gao et al. (US 2020/0075533), hereafter Gao’533 and Gao et al. (US 2023/0207514), hereafter Gao’514. (Re Claim 13) further comprising: initiating a first contact between said first and second bonding surfaces at a center of said first and second bonding surfaces; and subsequently expanding said first contact to a full extent of said first and second bonding surfaces. Tung is silent regarding the contacting and expanding contact as claimed. A PHOSITA desiring to improve upon Tung’s process would be motivated to look to related art to teach modifications and improvements. Related art from Gao’533 teaches (Fig. 5) contacting at a center first 522 and then expanding the contact area to the entire bonding surface, this advantageously displaces particles away from the bonding interface (¶¶52-58). Related art from Gao’514 also recognizes advantages of performing the bonding by bending the die such that contact is first made at the center and the contact is expanded, and notes this advantageously achieves void-free direct bonding (Fig. 1-2D, ¶¶24-31). In view of Gao’533 and Gao’514, a PHOSITA would find it obvious to modify Tung’s process to perform the bonding while curving one of the surfaces, making contact, and then expanding the contact surface in order to reduce particles at the interface while forming a void-free direct bond interface. Claims 1, 8, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al. (US 2020/0176421). (Re Claim 1) Saito teaches a method for bonding with precision alignment, the method comprising (see Figs. 1A-2D and ¶¶17-40): bonding a first bonding surface with a second bonding surface, wherein features on said first and second bonding surfaces are precisely overlaid during said bonding (Figs. 2A-2B); performing an etch on one or more of said first and second bonding surfaces to create recesses in one or more of said first and second bonding surfaces (¶33, recesses between protrusions, see Figs. 1A and 7C); and enabling precision alignment of said first and second bonding surfaces by a volatile fluid (liquid adhesive 12, ¶36) deployed between said first and second bonding surfaces (Figs. 2A-2B), wherein said recesses enable removal of said volatile fluid from a bonding interface during and after said bonding (recesses are enabling as claimed, excess adhesive at 15 is displaced away from the bonding interface to the recesses on either side when the chips are pressed together ¶38). (Re Claim 8) further comprising: dispensing said volatile fluid to a larger height near edges of one of said first and second bonding surfaces, and to a lower height away from said edges of said one of said first and second bonding surfaces (Fig. 2A). (Re Claim 10) further comprising: dispensing said volatile fluid to a larger height near edges of one of said first and second bonding surfaces (Fig. 2A). (Re Claim 11) wherein an initial contact with said volatile fluid is made near said edges of said one of said first and second bonding surfaces (Figs. 2A-2B, when contact is made, this will be near multiple edges). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional cited art teaches related bonding techniques. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIK T. K. PETERSON whose telephone number is (571)272-3997. The examiner can normally be reached M-F, 9-5 pm (CST). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Manno can be reached at 571-272-2339. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ERIK T. K. PETERSON/ Primary Examiner, Art Unit 2898
Read full office action

Prosecution Timeline

Apr 07, 2023
Application Filed
May 12, 2026
Non-Final Rejection mailed — §102, §103, §112
Jun 09, 2026
Examiner Interview Summary
Jun 09, 2026
Applicant Interview (Telephonic)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12672497
WAFER WITH TEST STRUCTURE AND METHOD OF DICING WAFER
4y 11m to grant Granted Jun 30, 2026
Patent 12660541
SURFACE PROCESSING METHOD AND PROCESSING SYSTEM
4y 0m to grant Granted Jun 16, 2026
Patent 12660543
METHOD FOR MAKING SEMICONDUCTOR PACKAGES
3y 4m to grant Granted Jun 16, 2026
Patent 12641849
LOW TEMPERATURE N-TYPE CONTACT EPI FORMATION
3y 2m to grant Granted May 26, 2026
Patent 12635245
DISPLAY PANEL AND DISPLAY DEVICE
3y 4m to grant Granted May 19, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
77%
Grant Probability
89%
With Interview (+11.6%)
2y 7m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 361 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month