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 .
Information Disclosure Statement
The information disclosure statement (IDS), submitted on August 23rd, 2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Sugimoto et al. (US 20180268178 A1), herein referred to as Sugimoto.
Regarding claim 1, Sugimoto discloses an apparatus (fig. 1), comprising: a glass (para. 0045) substrate (1), comprising first (4) and second (9) vias, each spanning between first (top) and second (bottom/bottom of recess) surfaces of the glass substrate (1); an antenna (2) on the first surface, wherein the antenna is coupled (see fig. 1) to the first (4) and second (9) vias; and an integrated circuit (IC) die (11) adjacent the second surface (see fig. 1), the IC die (11) comprising a first trace or pad (6) coupled to the first via (4) and to ground (3. While the connection is indirect, the die is connected through the pad, then the ground to be coupled with the via which is also coupled to the ground), the IC die also comprising a second trace or pad (7) capacitively coupled (see fig. 1) to the antenna (2) through the second via (9).
Regarding claim 3, Sugimoto anticipates all limitations of base claim 1.
Sugimoto also discloses wherein the glass substrate (1) and the IC die (11) are direct bonded together (bonding wires 13).
Regarding claim 4, Sugimoto anticipates all limitations of base claim 1.
Sugimoto also discloses wherein the IC die (11) is coupled to a power supply (para. 0061) through a host component (40), and the IC die is between (fig. 4) the glass substrate (1) and the host component (40) .
Regarding claim 5, Sugimoto anticipates all limitations of base claim 1.
Sugimoto also discloses wherein the second trace or pad (7) is capacitively coupled to the second via by a capacitor (5) comprising first and second electrodes, the glass substrate comprises the first electrode, and the IC die comprises the second electrode (see fig. 1a, pad on die 11 and on substrate).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto and further in view of Noori et al. (US 20210313284 A1), herein referred to as Noori.
Regarding claim 6, Sugimoto anticipates all limitations of base claim 1.
Sugimoto does not disclose wherein a package dielectric is around the IC die and the glass substrate.
However, Noori discloses a similar apparatus (fig 1a) wherein a package dielectric (113) is around the apparatus (fig. 1a).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of the references and make the apparatus of Sugimoto wherein a package dielectric is around the IC die and the glass substrate, as taught by Noori, to encapsulate and provide protection to the apparatus (para. 0069).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto.
Regarding claim 7, Sugimoto anticipates all limitations of base claim 1.
Sugimoto does not directly disclose wherein a path running from the antenna through the first via and to ground has a length of less than 3 mm.
However, Sugimoto does disclose that the apparatus is intended for use on such objects as prepaid/credit/debit cards (para. 0064), which are by standard less than 1 mm in thickness. Therefore, it would be obvious to one of ordinary skill in the art prior to the effective filing date to make the apparatus of Sugimoto wherein a path running from the antenna through the first via and to ground has a length of less than 3 mm, in order to keep a low profile on a bank card. As such, the claimed dimensions appear to be an obvious matter of engineering design choice and thus, while being a difference, does not serve in any way to patentably distinguish the claimed invention from the applied prior art. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Kuhle, 526 F2d. 553, 555, 188 USPQ 7, 9 (CCPA 1975).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto and further in view of Cok (US 20170338542 A1), herein referred to as Cok.
Regarding claim 8, Sugimoto anticipates all limitations of base claim 1.
Sugimoto does not disclose wherein the glass substrate has a thickness of less than 500 µm.
However, Cok discloses a similar apparatus wherein the substrate has a thickness of less than 500 µm (para. 0019).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of the references and make the apparatus of Sugimoto wherein the glass substrate has a thickness of less than 500 µm, as taught by Cok, to keep the apparatus low profile for application.
Claims 9, 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto and further in view of Sakita et al. (US 20190115662 A1), herein referred to as Sakita.
Regarding claim 9, Sugimoto discloses an apparatus (fig. 1a), comprising: a substrate (1), comprising first (4) and second (9-5) vias, each spanning between first (top) and second (bottom) surfaces of the substrate; an antenna (2) on the first surface, wherein the antenna is coupled (see fig. 1a) to the first (4) and second (9) vias and to receive or transmit a signal (para. 0003), the signal having a wavelength; a first path from the antenna to a ground terminal (through via 4), wherein the first path comprises the first via (4); and a second path (through via 9, 11, then to 5) to or from the antenna, wherein the second path comprises the second via (9) and at least a first electrode of a capacitor (5).
Sugimoto does not directly disclose wherein the first path has an electrical length approximately equal to a quarter of the wavelength, however, para. 0002 teaches that the antenna operates within the UHF range, the upper end having a wavelength on the order of magnitude as that of the size of the apparatus itself, and therefore would be approximate to ¼ wavelength on said electrical path.
Furthermore, Sakita discloses an antenna apparatus wherein line paths are set at ¼ wavelength (para. 0005).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of the references and make the apparatus of Sugimoto wherein the first path has an electrical length approximately equal to a quarter of the wavelength, as taught by Sakita, for impedance matching.
Regarding claim 14, Sugimoto and Sakita render obvious all limitations of base claim 9.
Sugimoto also discloses wherein the substrate (1) comprises a glass layer (para. 0045), and the first (4) and second (9) vias extend through the glass layer (see fig. 1a).
Regarding claim 15, Sugimoto and Sakita render obvious all limitations of base claim 9.
Sugimoto does not disclose specifically wherein the first path has an electrical length greater than 23% of the wavelength and less than 27% of the wavelength.
However, Sakita discloses wherein the first path has an electrical length greater than 23% of the wavelength and less than 27% of the wavelength (specifically ¼, para. 0005).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of the references and make the modified apparatus of Sugimoto wherein the first path has an electrical length greater than 23% of the wavelength and less than 27% of the wavelength, as taught by Sakita, for impedance matching.
Claims 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sugimoto and further in view of Chen et al. (JP 2015527730 A), herein referred to as Chen.
Regarding claim 16, Sugimoto discloses a method, comprising: receiving a workpiece (20) comprising a substrate (1); coupling an integrated circuit (IC) die (11) to an antenna (2) by coupling the IC die (11) to a first surface (bottom) of the substrate (1), wherein the antenna (2) is on a second surface (top) of the substrate (1), the second surface distal the first surface (see fig. 1a), and the antenna (2) (para. 0002-0003) is to receive or transmit a signal having a wavelength; forming an electrostatic discharge (ESD) path (through via 4) between the antenna (2) and a ground terminal (3), wherein an electrical length of the ESD path is approximately equal to a fourth of the wavelength (para. 0002 teaches that the antenna operates within the UHF range, the upper end having a wavelength on the order of magnitude as that of the size of the apparatus itself, and therefore would be approximate to ¼ wavelength on said electrical path); and forming a signal path (through via 9) between the antenna (2) and the IC die (11), and the substrate (4) comprises at least a portion of the capacitor (5).
Sugimoto does not disclose wherein the signal path comprises a capacitor.
However, Chen discloses a similar device wherein a capacitor is included on the signal path (page 70 of attached, lines 24-36).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of the references and make the method of Sugimoto wherein the signal path comprises a capacitor, as taught by Chen, to provide termination (page 70 of attached, lines 24-36).
Regarding claim 17, Sugimoto and Chen render obvious all limitations of base claim 16.
Sugimoto also discloses further comprising coupling the antenna (2) to, or forming the antenna on, the second surface (top, fig. 1a).
Regarding claim 18, Sugimoto and Chen render obvious all limitations of base claim 16.
Sugimoto also discloses wherein coupling the IC die to the first surface comprises direct bonding (bonding wire 13)the IC die and the substrate.
Regarding claim 20, Sugimoto and Chen render obvious all limitations of base claim 16.
Sugimoto also discloses wherein forming the ESD path comprises forming a via (4) through the substrate (1).
Allowable Subject Matter
Claims 2, 10-13, and 19 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:
Regarding claim 2, the prior art fails to teach or fairly suggest, in combination with other claimed limitations, wherein a path running from the antenna through the first via and to ground comprises a portion of the IC die.
Regarding claim 10, the prior art fails to teach or fairly suggest, in combination with other claimed limitations, further comprising an integrated circuit (IC) die coupled to the second path, wherein the capacitor is on the first or second surface.
Regarding claim 19, the prior art fails to teach or fairly suggest, in combination with other claimed limitations, wherein coupling the IC die to the first surface comprises forming the capacitor.
With regard to all three of these claims, the difference between the closest prior art and the invention, is the structural positioning of certain parts, and most notably the capacitor. In many cases, simply moving parts of a device does not constitute novelty, however, in circuits such as this one, these structural differences can make significant changes to the operational outputs of the device which would not be obvious to one of ordinary skill in the art.
Conclusion
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/BRANDON SEAN WOODS/Examiner, Art Unit 2845
/HOANG V NGUYEN/Primary Examiner, Art Unit 2845
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