Prosecution Insights
Last updated: May 29, 2026
Application No. 18/141,456

INTEGRATED CIRCUITS WITH CONDUCTIVE POSTS HAVING ROUGH SIDEWALLS

Final Rejection §103
Filed
Apr 30, 2023
Examiner
HANUMASAGAR, SHAMITA S
Art Unit
2814
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Texas Instruments Incorporated
OA Round
2 (Final)
82%
Grant Probability
Favorable
3-4
OA Rounds
1m
Est. Remaining
71%
With Interview

Examiner Intelligence

Grants 82% — above average
82%
Career Allowance Rate
9 granted / 11 resolved
+13.8% vs TC avg
Minimal -11% lift
Without
With
+-10.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
33 currently pending
Career history
63
Total Applications
across all art units

Statute-Specific Performance

§103
75.6%
+35.6% vs TC avg
§102
13.4%
-26.6% vs TC avg
§112
11.0%
-29.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 11 resolved cases

Office Action

§103
Attorney Docket Number: T101880US01 Filing Date: 04/30/2023 Claimed Priority Date: none Inventors: Torres et al. Examiner: Shamita S. Hanumasagar DETAILED ACTION This Office action responds to the amendment filed on 01/20/2026. 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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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. Amendment Status The amendment filed on 01/20/2026 in reply to the previous Office action mailed on 10/20/2025 has been entered. The present Office action is made with all the suggested amendments being fully considered. Applicant has canceled claims 16-20 and added new claims 21-22. Accordingly, pending in this Office action are claims 1-15 and 21-22. Claim Objections Applicant is advised that should claim 9 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). The claims are further objected to because of the following informalities: In lines 1-2 of claim 21, “wherein the grooves in the sidewall of the post is configured to interlock…” should read “wherein the grooves in the sidewall of the post are configured to interlock…” In lines 1-2 of claim 22, “wherein the grooves in the sidewall of the post is formed by etching…” should read “wherein the grooves in the sidewall of the post are formed by etching…” Appropriate correction is required. No new matter should be added. Claim Rejections Initially, and with respect to claims 1, 4, 6-8, 11-12, 14-15, and 22, note that a “product by process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935). Note that the applicants have the burden of proof in such cases, as the above case law makes clear. 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. Claims 1-12, 14-15, and 21-22 are rejected under 35 U.S.C. 103 as obvious over Torres (US 2020/0075523) in view of Pielmeier (US 2020/0291538) and Shim (US 2011/0079887). Regarding claim 1, Torres (see, e.g., fig. 1A) shows most aspects of the instant invention, including a semiconductor package 100 comprising: an integrated circuit 104 having a contact 106; a conductive bump 108 directly attached to the contact, the conductive bump having a sidewall with grooves and a conductive bump material, the grooves having depths; a leadframe 110 electrically coupled to the conductive bump (see, e.g., par.0021/ll.3-4); and an integrated circuit package mold 112 covering portions of the conductive bump and the lead frame, the grooves in the sidewall of the conductive bump configured to interlock with the integrated circuit package mold (see, e.g., par.0030/ll.7-9) Although Torres shows most aspects of the instant invention, and further shows the presence of an electrically conductive adhesive 114 directly contacting Torres’s conductive bump, Torres fails to specify that the grooves have varying depths and that such depths are between 0.1 µm to 0.5 µm. Pielmeier, in the same field of endeavor, teaches forming grooves of varying depth in a conductive bump 108 (see, e.g., Pielmeier: figs. 1 and 6 and par.0052/ll.8-10). Pielmeier teaches that such a structure can improve the adhesion between the conductive bump and an integrated circuit package mold, can reduce further costs by allowing the omission of a separate adhesion promoter from the integrated circuit package mold, and can promote good wettability between the conductive bump and an electrically conductive adhesive while limiting overflow of the electrically conductive adhesive (see, e.g., Pielmeier: figs. 1-2 and pars.0037 and 0039/ll.15-20). Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Torres’s grooves comprise varying depths, as taught by Pielmeier, so as to promote adhesion between Torres’s conductive bump and integrated circuit package mold while reducing potential adhesion costs and so as to further promote good wettability between Torres’s conductive bump and electrically conductive adhesive while limiting overflow of Torres’s electrically conductive adhesive. However, Torres/Pielmeier fail to specify that the grooves’ varying depths are between 0.1 µm to 0.5 µm. Shim, in the same field of endeavor as Torres/Pielmeier, teaches a structure 151/152 having grooves directly contacting an integrated circuit package mold 250, wherein the process to form the grooves results in the grooves having varying depths (see, e.g., Shim: fig. 3 and pars.0055, 0063, and 0079/ll.6-12). Shim teaches that when the average depths of the grooves are less than 0.1 µm that the adhesiveness between the structure and the mold compound is diminished (see, e.g., Shim: par.0053). On the other hand, Shim also teaches that when the average depths of the grooves are greater than 0.5 µm that the structure becomes unstable and prone to peeling (see, e.g., Shim: par.0054). Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have the grooves of Torres/Pielmeier comprise varying depths between 0.1 µm to 0.5 µm, as taught by Shim, so as to reduce adhesion loss between Torres/Pielmeier’s integrated circuit package mold and conductive bump while simultaneously mitigating peeling and maintaining stability in the conductive bump. Nevertheless, differences in depth will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical, i.e., producing results that are unexpected, significant, and different in kind rather than degree. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Since the applicant has not established the criticality (see next paragraph below) of the claimed depths, i.e., between 0.1 µm to 0.5 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Torres/Pielmeier/Shim. CRITICALITY The specification contains no disclosure of either the critical nature of the claimed depths or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Furthermore, the language, term, or phrase “grooves formed by etching a conductive bump material” is directed towards the process of making grooves in a conductive bump. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “grooves formed by etching a conductive bump material” only requires grooves in a conductive bump, which does not distinguish the invention from Torres/Piemeier/Shim, who teaches the structure as claimed. Accordingly, it is noted that that Torres/Pielmeier/Shim shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 10-17 above), and that the method steps of forming grooves by etching a conductive bump material are intermediate steps that do not affect the structure of the final device. Regarding claim 9, as necessitated by Applicant’s amendments to claim language overcoming the 35 U.S.C. 112 rejections set forth in the previous Office action mailed on 10/20/2025, Torres (see, e.g., fig. 1A) shows most aspects of the instant invention, including an integrated circuit device 100 comprising: an integrated circuit 104 having a contact 106; a post 108 directly attached to the contact, the post having a sidewall with grooves, the grooves having depths; a lead 110 (see, e.g., par.0022/ll.1-3) electrically coupled to the post (see, e.g., par.0021/ll.3-4); and a package mold 112 covering portions of the post and the lead, the grooves in the sidewall of the post configured to interlock with the package mold (see, e.g., par.0030/ll.7-9) Although Torres shows most aspects of the instant invention, and further shows the presence of an electrically conductive adhesive 114 directly contacting Torres’s post, Torres fails to specify that the grooves have varying depths and that such depths are between 0.1 µm to 0.5 µm. Pielmeier, in the same field of endeavor, teaches forming grooves of varying depth in a post 108 (see, e.g., Pielmeier: figs. 1 and 6 and par.0052/ll.8-10). Pielmeier teaches that such a structure can improve the adhesion between the post and a package mold, can reduce further costs by allowing the omission of a separate adhesion promoter from the package mold, and can promote good wettability between the post and an electrically conductive adhesive while limiting overflow of the electrically conductive adhesive (see, e.g., Pielmeier: figs. 1-2 and pars.0037 and 0039/ll.15-20). Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Torres’s grooves comprise varying depths, as taught by Pielmeier, so as to promote adhesion between Torres’s post and package mold while reducing potential adhesion costs and so as to further promote good wettability between Torres’s post and electrically conductive adhesive while limiting overflow of Torres’s electrically conductive adhesive. However, Torres/Pielmeier fail to specify that the grooves’ varying depths are between 0.1 µm to 0.5 µm. Shim, in the same field of endeavor as Torres/Pielmeier, teaches a structure 151/152 having grooves directly contacting a package mold 250, wherein the process to form the grooves results in the grooves having varying depths (see, e.g., Shim: fig. 3 and pars.0055, 0063, and 0079/ll.6-12). Shim teaches that when the average depths of the grooves are less than 0.1 µm that the adhesiveness between the structure and the mold compound is diminished (see, e.g., Shim: par.0053). On the other hand, Shim also teaches that when the average depths of the grooves are greater than 0.5 µm that the structure becomes unstable and prone to peeling (see, e.g., Shim: par.0054). Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have the grooves of Torres/Pielmeier comprise varying depths between 0.1 µm to 0.5 µm, as taught by Shim, so as to reduce adhesion loss between Torres/Pielmeier’s package mold and post while simultaneously mitigating peeling and maintaining stability in the post. Nevertheless, differences in depth will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical, i.e., producing results that are different in unexpected, significant, and different in kind rather than degree. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Since the applicant has not established the criticality (see next paragraph below) of the claimed depths, i.e., between 0.1 µm to 0.5 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Torres/Pielmeier/Shim. CRITICALITY The specification contains no disclosure of either the critical nature of the claimed depths or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Regarding claim 2, Torres (see, e.g., fig. 1A) shows an electrically conductive adhesive 114 coupling the conductive bump 108 to the lead frame 110. Regarding claim 3, Torres (see, e.g., par.0021/ll.5) shows that the conductive bump 108 comprises copper. Regarding claim 4, Torres (see, e.g., par.0021/ll.5-6) shows that the conductive bump 108 is electroplated to the contact 106. Nevertheless, the language, term, or phrase “electroplated to the contact” is directed towards the process of connecting a conductive bump and contact. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “electroplated to the contact” only requires connecting a conductive bump and contact, which does not distinguish the invention from Torres, who teaches the structure as claimed. Accordingly, it is noted that that Torres shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 10-19 above), and that the method steps of electroplating to the contact are intermediate steps that do not affect the structure of the final device. Regarding claim 5, Torres (see, e.g., par.0020/ll.5-7) shows that the contact 106 is a pad coupled to an integrated circuit 104. Regarding claim 6, the language, term, or phrase “wherein the grooves are formed by etching along grain boundaries of the conductive bump material” is directed towards the process of creating grooves in a conductive bump. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein the grooves are formed by etching along grain boundaries of the conductive bump material” only requires grooves created in a conductive bump, which does not distinguish the invention from Torres/Pielmeier/Shim, who teaches the structure as claimed. Accordingly, it is noted that that Torres/Pielmeier/Shim shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 10-19 above), and that the method steps of forming grooves by etching along grain boundaries of a conductive bump material are intermediate steps that do not affect the structure of the final device. Regarding claim 10, Torres (see, e.g., fig. 1A) shows an electrically conductive adhesive 114 coupling the post 108 to the lead 110 (see, e.g., par.0022/ll.1-3). Regarding claim 11, Torres (see, e.g., par.0021/ll.5-6) shows that the post 108 is electroplated to the contact 106. Nevertheless, the language, term, or phrase “electroplated to the contact” is directed towards the process of connecting a post and contact. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “electroplated to the contact” only requires connecting a post and contact, which does not distinguish the invention from Torres, who teaches the structure as claimed. Accordingly, it is noted that that Torres shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 20-27 above), and that the method steps of electroplating to the contact are intermediate steps that do not affect the structure of the final device. Regarding claim 12, the language, term, or phrase “wherein the grooves are created by overetching the post” is directed towards the process of creating grooves in a post. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein the grooves are created by overetching the post” only requires grooves created in a post, which does not distinguish the invention from Torres, who teaches the structure as claimed. Accordingly, it is noted that that Torres shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 20-27 above), and that the method steps of forming grooves by overetching a post are intermediate steps that do not affect the structure of the final device. Regarding claim 7 and 14, the language, term, or phrase “wherein the grooves are formed by etching with a diluted sulfuric peroxide solution” is directed towards the process of creating grooves in a post. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein the grooves are formed by etching with a diluted sulfuric peroxide solution” only requires grooves created in a post, which does not distinguish the invention from Torres, who teaches the structure as claimed. Accordingly, it is noted that that Torres shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 10-27 above), and that the method steps of forming grooves by etching with a diluted sulfuric peroxide solution are intermediate steps that do not affect the structure of the final device. Regarding claim 8, the language, term, or phrase “wherein etching with the diluted sulfuric peroxide solution removes 1 µm to 3 µm of material from the sidewall of the conductive bump” is directed towards the process of creating grooves in a conductive bump. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein etching with the diluted sulfuric peroxide solution removes 1 µm to 3 µm of material from the sidewall of the conductive bump” only requires grooves created in a conductive bump, which does not distinguish the invention from Torres/Pielmeier/Shim, who teaches the structure as claimed. Accordingly, it is noted that that Torres/Pielmeier/Shim shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 10-19 and 42-43 above), and that the method steps of etching with a diluted sulfuric peroxide solution to remove 1 µm to 3 µm of material from the sidewall of a conductive bump are intermediate steps that do not affect the structure of the final device. Regarding claim 15, the language, term, or phrase “wherein etching with the diluted sulfuric peroxide solution removes 1 µm to 3 µm of material from the sidewall of the post” is directed towards the process of creating grooves in a post. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein etching with the diluted sulfuric peroxide solution removes 1 µm to 3 µm of material from the sidewall of the post” only requires grooves created in a post, which does not distinguish the invention from Torres, who teaches the structure as claimed. Accordingly, it is noted that that Torres shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 20-27 and 40-43 above), and that the method steps of etching with a diluted sulfuric peroxide solution to remove 1 µm to 3 µm of material from the sidewall of a post are intermediate steps that do not affect the structure of the final device. Regarding claim 21, Torres (see, e.g., fig. 1A) shows that the grooves in the sidewall of the post 108 is configured to interlock with the package mold 112. Furthermore, Pielmeier (see, e.g., Pielmeier: par.0037) also teaches that the grooves 114 in the sidewall 109 of the post 108 is configured to interlock with a package mold 116. Regarding claim 22, the language, term, or phrase “wherein the grooves in the sidewall of the post is formed by etching the post” is directed towards the process of creating grooves in the sidewall of a post. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “wherein the grooves in the sidewall of the post is formed by etching the post” only requires grooves created in the sidewall of a post, which does not distinguish the invention from Torres/Pielmeier/Shim, who teaches the structure as claimed. Accordingly, it is noted that that Torres/Pielmeier/Shim shows all structural aspects of the packaged device according to the claimed invention (see paragraphs 20-27 above), and that the method steps of forming grooves in the sidewall of the post by etching the post are intermediate steps that do not affect the structure of the final device. Allowable Subject Matter Claim 13 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims. Response to Arguments Applicant’s amendments to the specification have overcome the objections to the drawings put forth in the previous Office action mailed on 10/20/2025. Accordingly, the objections to the drawings put forth in the previous Office action are hereby withdrawn. Applicant’s amendments to claim 9 have overcome the 35 U.S.C. 112 rejections put forth in the previous Office action mailed on 10/20/2025. Accordingly, the 35 U.S.C. 112 rejections regarding claim 9 as put forth in the previous Office action are hereby withdrawn. With respect to the claims, Applicant argues: Pielmeier shows forming micropores on a lead frame including metal leads 102, and not on the Cu pillars 108 as the Examiner alleges. The lead frame 102 is a separate component to which the semiconductor die 104 including the Cu pillars 108 are attached to in semiconductor assembly process. There is no evidence that the process of forming the micropores 114 on a lead frame (electrochemical deposition) can be used at a die level on a Cu bump, and therefore a person of ordinary skill in the art would not be motivated to modify Torres's conductive bump 108 with creating micropores on a lead frame as Pielmeier suggests. Applicant’s arguments are found unpersuasive because Pielmeier expressly teaches the features that Applicant contends Pielmeier does not. Par.0036/ll.15-16 of Pielmeier teaches that grooves 114 may be formed in the sidewall surfaces 109 of conductive features 108 (e.g., conductive bumps or posts), wherein par.0052/ll.8-10 of Pielmeier further teaches that such grooves have varying depths. Furthermore, Pielmeier even provides explicit motivation for having grooves formed in the surfaces of such conductive features. Par.0036/ll.17-23 of Pielmeier teaches that such grooves prevent bridging/shorting between adjacent conductive features and limit electrically conductive adhesive (e.g., solder) overflow onto the sidewalls of the conductive features. Additionally, par.0037/ll.3-7 of Pielmeier teaches that such grooves promote adhesion with an encompassing package mold 116 while simultaneously reducing additional adhesion costs. Moreover, par.0039/ll.15-18 of Pielmeier teaches that such grooves formed in the surfaces of such conductive features ensure good wettability between the conductive features and an electrically conductive adhesive while limiting undesired overflow of the electrically conductive adhesive. Therefore, contrary to Applicant’s arguments, not only does Pielmeier teach and subsequently evidence that grooves may be formed on a (sidewall) surface of a conductive feature (e.g., a conductive bump or post), Pielmeier provides explicit motivation and clear rationale regarding the benefits of such grooves on such conductive features. Accordingly, and it is especially noted that Torres already states that Torres’s grooves may be formed with varying dimensions (see, e.g., Torres: pars.0023/ll.6-8 and 0030/ll.1-4), it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Torres’s grooves comprise varying depths, as taught by Pielmeier, so as to promote adhesion between Torres’s conductive bump or post, as recited respectively in claims 1 and 9, and (integrated circuit) package mold while reducing potential adhesion costs, and so as to further promote good wettability between Torres’s conductive bump or post, as recited respectively in claims 1 and 9, and electrically conductive adhesive while limiting bridging/shorting and undesired overflow of Torres’s electrically conductive adhesive. Applicant’s other arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection. Conclusion Applicant’s amendment necessitated the new grounds 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. Papers related to this application may be submitted directly to Art Unit 2814 by facsimile transmission. Papers should be faxed to Art Unit 2814 via the Art Unit 2814 Fax Center. The faxing of such papers must conform to the notice published in the Official Gazette, 1096 OG 30 (15 November 1989). The Art Unit 2814 Fax Center number is (571) 273-8300. The Art Unit 2814 Fax Center is to be used only for papers related to Art Unit 2814 applications. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shamita Hanumasagar at (703) 756-1521 and between the hours of 7:00 AM to 5:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Shamita.Hanumasagar@uspto.gov. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy, can be reached on (571) 272-1705. 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 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. /Shamita S. Hanumasagar/Examiner, Art Unit 2814 /WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814
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Prosecution Timeline

Apr 30, 2023
Application Filed
Oct 20, 2025
Non-Final Rejection mailed — §103
Jan 20, 2026
Response Filed
Apr 06, 2026
Final Rejection mailed — §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
82%
Grant Probability
71%
With Interview (-10.7%)
3y 2m (~1m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 11 resolved cases by this examiner. Grant probability derived from career allowance rate.

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