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 .
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 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.
Response to Amendment
The following office action is in response to the amendment and remarks filed on 12/16/25.
Applicant’s amendment to claims 1 and 7 is acknowledged.
Claims 1-19 are pending and subject to examination at this time.
Response to Arguments
Regarding claim 1 and the 35 USC 112 rejection:
In response to applicant’s argument regarding “suitable for”, the following guidance from the MPEP § 707.07(f) is indicated:
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 1 and the 35 USC 102 rejection:
Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive.
Applicant does not have an explicit definition for “pad” in the original specification. Under broadest reasonable interpretation a horizontal conductive layer can be considered an pad.
Akasaki refers to element (26) as “lead electrodes”. Akasaki does not have to label element (26) as a “pad” in order for it to be a “pad” because “identity of terminology” is not required.
See MPEP § 2131:
“The identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).
Furthermore, see following references disclosing a horizontal conductive layer is a “pad”:
Lin, CN 102456637 (e.g. See fig. 64 the horizontal conductive layer (60) is labeled a pad. It extends from a vertical through-hole/through-connection (52), similar to Akasaki.)
Takeuchi, CN 106898593 (e.g. See fig. 1 the horizontal conductive layer (6) is a labeled pad. It extends form a vertical through-hole/through-connection (8), similar to Akasaki.)
The following prior art rejections are from the Office Action of 9/16/25, but is reproduced for reference.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akasaki et al., JP H10256410 A (see attached English machine translation)
Akasaki anticipates:
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1. (see figs. 1-5) A semiconductor package substrate (23) made from a non-metallic material having a first top surface, a second bottom surface opposite from the first surface, and at least one side surface, the substrate comprising:
at least two pads (e.g. pads annotated in fig.3 above; connection point of bonding wires 27) positioned on the first surface that are suitable for receiving an electronic element (25);
an encapsulant material layer (24/28) covering the first surface;
at least two terminals (e.g. terminals annotated in fig. 3) positioned on the second surface and electrically connected to the pads; and
wherein at least one of the two terminals has a portion that is exposed at the at least one side surface and structured as a wettable flank (22) (See English machine translation at page 5: “…the solder 35 wets the surface of the through-hole electrode 22. It rises to the top of the through-hole electrode 22 and is firmly fixed.”) See Akasaki at English machine translation page 1-7, figs. 1-9.
2. The semiconductor package substrate according to claim 1, wherein the wettable flank (22) has a vertical groove on the side surface forming a slot hole, figs. 1-5.
3. The semiconductor package substrate according to claim 1, wherein the slot hole (e.g. of 22) is formed as a U-shape groove, figs. 1-5.
4. The semiconductor package substrate according to claim 1, wherein the wettable flank (22) has a vertical groove on the side surface forming a slot hole, and wherein the slot hole is formed as a U-shape groove, figs. 1-5.
7. The semiconductor package substrate according to claim 2, wherein the slot hole (e.g. of 22) extends to the second surface (e.g. bottom surface), figs. 1-5.
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(s) 5, 6, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akasaki, as applied to claim 1 above, in view of Goh, US Patent No. 9,972,589.
Regarding claims 5-6:
Akasaki teaches all the limitations of claim 1 above, but is silent:
wherein semiconductor package substrate is a multilayer circuit element;
wherein the semiconductor package substrate is an organic laminated substrate.
In an analogous art, Goh teaches:
(see fig. 1) wherein semiconductor package substrate (104) is a multilayer circuit element;
wherein the semiconductor package substrate (104) is an organic laminated substrate. See Goh at col 5-7, ln 1–67.
Regarding claims 8-9:
Akasaki and Goh teach the limitations as applied to claims 5-6 above.
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the teachings of Akasaki with the teachings of Goh because “Semiconductor dies are routinely connected to larger circuit boards such as motherboards and other types of printed circuit boards (PCBs) via a package substrate. A package substrate typically has two sets of connection points, a first set for connection to the die or multiple dies and a second less densely-packed set for connection to the PCB. A package substrate generally consists of an alternating sequence of a plurality of organic insulation or dielectric layers and a plurality of patterned electrically conductive layers forming traces between the insulation layers.” See Goh at col 1, ln 15–35.
Conclusion
THIS ACTION IS MADE FINAL. 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 concerning this communication or earlier communications from the examiner should be directed to Michele Fan whose telephone number is 571-270-7401. The examiner can normally be reached on M-F from 7:30 am to 4 pm.
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/Michele Fan/
Primary Examiner, Art Unit 2818
27 February 2026