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 .
Remarks
The amendment filed on November 17th, 2025 has been acknowledges. By this amendment, claims 1, 4, 10, and 12 have been amended and claims 21-30 have been newly added. Accordingly, claims 1-30 are pending in the present application in which claims 1, 4, 10, 12, 15, 28, and 30 are in independent form. Applicant’s amendment to the title has been accepted.
Applicant’s arguments, see remarks on page 14, line 14 to page 18, line 2, filed on November 17th, 2025, with respect to the rejection(s) of claim(s) 15 under 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Jow (U.S. Pub. 2008/0067641) and Hsu et al. (U.S. Pub. 2015/0359096).
Claim Rejections - 35 USC § 112
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 15-20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation “attaching a semiconductor die to a substrate or a die attach pad” on line 2, and the claim also recites “forming a package structure that encloses the semiconductor die and having an opening that exposes a metal terminal attached to the substrate” on lines 5-6 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Thus, it is unclear if the Applicant is intended to claim that the electronic device include a substrate, a die attach pad, or both. Clarification is respectfully requested.
Claims 16-20 depend directly or indirectly on base claim 15 and inherit these deficiencies.
New Grounds of Rejection
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.
Claim(s) 1, 8, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jow (U.S. Pub. 2008/0067641).
In re claim 1, Jow discloses an electronic device 10, comprising: a semiconductor die (30,40) attached to a substrate 15 and coupled to a circuit of the electronic device 10 (see paragraphs [0021], [0022], [0023] and figs. 2-4, note that, the semiconductor die such as a controlling component 30 or a flash memory chip 40 is electrically connected to a circuit on the substrate 15 via wires 80); an electronic component 70 coupled to the circuit (see paragraph [0023] and figs. 2-4, note that the electronic component 70 is passive component that is electrically connected to circuit on the substrate 15); and a package structure 50 that encloses the semiconductor die (30,40), the package structure 50 having an opening 60 that exposes a top and at least partial side portions of the electronic component 70 (see paragraph [0023] and figs. 2-4).
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In re claim 8, as applied to claim 1 above, Jow discloses wherein the electronic component is a passive circuit component (see paragraph [0020] and figs. 2-4).
In re claim 30, Jow discloses an electronic device 10, comprising: a semiconductor die (30,40) attached to a substrate 15 and coupled to a circuit of the electronic device (see paragraphs [0021], [0023] and figs. 2-4, note that, the electronic device such as controlling component 30 or a flash memory chip 40 is electrically connected to the circuit on the substrate 15 via wires 80); an electronic component 70 coupled to the circuit (see paragraph [0023] and figs. 2-4, note that, the electronic component 70 is a passive component that is electrically connected to the substrate 15); and a package structure 50 that encloses the semiconductor die (30,40), the package structure 50 having an opening 60 that exposes a portion of the electronic component 70, wherein no portion of the package structure 50 contacts the electronic component 70 (see paragraph [0023] and figs. 2-4, note that, the package structure 50 is spaced apart from the top surface and sidewalls of the electronic component 70 and such that no portion of the package structure 50 contacts the electronic component 70).
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) 2, 3, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jow (U.S. Pub. 2008/0067641), as applied to claim 1 above, and further in view of Hsu et al. (U.S. Pub. 2015/0359096).
In re claim 2, as applied to claim 1 above, Jow discloses wherein the electronic device 10 further comprising a conductive lead 24 that is coupled to the circuit (via wire 80) and extends outward from the package structure 50 (see paragraph [0019] and fig. 2) but is silent to wherein a metal terminal attached to the substrate, the electronic component being coupled to the metal terminal.
However, Hsu discloses in a same field of endeavor, an electronic device, including, inter-alia, wherein a metal terminal 240 attached to the substrate 23, the electronic component 28 being coupled to the metal terminal 240 (see paragraphs [0044], [0052], [0053] and figs. 2E-F).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Hsu into the electronic device of Jow in order to enable wherein a metal terminal attached to the substrate, the electronic component being coupled to the metal terminal in Jow to be formed in order to increase the electrical performance and signal stability of the electronic device. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
In re claim 3, as applied to claim 2 above, Jow in combination with Hsu discloses wherein: the metal terminal 240 is coupled to the conductive lead; and the electronic component 28 is soldered to the metal terminal 240 (via soldering material 280) (see paragraph [0054] and fig. 2F of Hsu).
In re claim 9, as applied to claim 8 above, Jow is silent to wherein the electronic component has terminals soldered to respective metal terminals of the electronic device.
However, Hsu discloses in a same field of endeavor, including, inter-alia, wherein the electronic component 28 has terminals soldered (via soldering material 280) to respective metal terminals 240 of the electronic device (see paragraph [0054] and fig. 2F).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Hsu into the electronic device of Jow in order to enable wherein the electronic component has terminals soldered to respective metal terminals of the electronic device in Jow to be formed in order to increase the electrical performance and signal stability of the electronic device. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jow (U.S. Pub. 2008/0067641) in view of Kummerl et al. (U.S. Pub. 2012/0015479).
In re claim 10, Jow discloses a system, comprising: an electronic device 10, the electronic device 10 comprising: a semiconductor die 40 attached to a substrate 26 and coupled to a circuit of the electronic device (see paragraphs [0018], [0020] and figs. 2-4, note that the semiconductor die 40 is coupled to the circuit on the substate 26 via wires 80); an electronic component 70 coupled to the circuit (see paragraph [0020] and figs. 2-4); a package structure 50 that encloses the semiconductor die 40, the package structure 50 having an opening 60 that exposes a top and at least partial side portions of the electronic component 70 (see paragraph [0020] and figs. 2-4); and a conductive lead 24 that is coupled to the circuit (via wires 80) and extends outward from the package structure 50 (see paragraphs [0018], [0020] and figs. 2-4).
Jow is silent to wherein the system including a circuit board, the electronic device attached to the circuit board, and the conductive lead coupled to the circuit board.
However, Kummerl discloses in a same field of endeavor, a system including, inter-alia, a circuit board (PCB), the electronic device attached to the circuit board, and the conductive lead coupled to the circuit board (see paragraph [0026]).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Kummerl into the system of Jow in order to enable a circuit board, the electronic device attached to the circuit board, and the conductive lead coupled to the circuit board in Jow to be formed because through the circuit board, the semiconductor die can be connected to external inputs and outputs, as known to one of ordinary skill in the art (see paragraph [0026] of Kummerl). Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jow (U.S. Pub. 2008/0067641) in view of Kummerl et al. (U.S. Pub. 2012/0015479), as applied to claim 10 above, and further in view of Hsu et al. (U.S. Pub. 2015/0359096).
In re claim 11, as applied to claim 10 above, Jow in combination with Kummerl discloses wherein the electronic device 10 further comprises a conductive lead 24 that is coupled to the circuit (via wires 80) and extends outward from the package structure 50 (see paragraphs [0018], [0020] and figs. 2-4 of Jow) but is silent to wherein a metal terminal attached to the substrate, the electronic component being coupled to the metal terminal.
However, Hsu discloses in a same field of endeavor, an electronic device, including, inter-alia, wherein a metal terminal 240 attached to the substrate 23, the electronic component 28 being coupled to the metal terminal 240 (see paragraphs [0044], [0052], [0053] and figs. 2E-F).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Hsu into the electronic device of Jow in order to enable wherein a metal terminal attached to the substrate, the electronic component being coupled to the metal terminal in Jow to be formed in order to increase the electrical performance and signal stability of the electronic device. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
Claim(s) 15-17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jow (U.S. Pub. 2008/0067641) in view of Hsu et al. (U.S. Pub. 2015/0359096).
In re claim 15, Jow discloses a method of fabricating an electronic device, the method comprising: attaching a semiconductor die (30,40) to a substrate 15 (see paragraph [0021] and fig. 3) or a die attach pad 26 (see paragraph [0018] and fig. 2); performing an electrical connection process that couples the semiconductor die (30,40) to a circuit (see paragraphs [0020], [0023] and figs. 2-3, note that, the semiconductor die is electrically connected to the circuit via wires 80); forming a package structure 50 that encloses the semiconductor die (30,40) and having an opening 70 that exposes a surface of the substrate 15 or a die attach pad 26 (see paragraphs [0020], [0023] and figs. 2-4).
Jow is silent to wherein the package structure having an opening that exposes a metal terminal attached to the substrate; and attaching an electronic component through the opening to the metal terminal.
However, Hsu discloses in a same field of endeavor, a method of fabricating an electronic device, including, inter-alia, wherein the package structure 26 having an opening 260 that exposes a metal terminal 240 attached to the substrate 23; and attaching an electronic component 28 through the opening 260 to the metal terminal 240 (via soldering material 280).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Hsu into the method of fabricating the electronic device of Jow in order to enable the step of forming a package structure having an opening that exposes a metal terminal attached to the substrate; and attaching an electronic component through the opening to the metal terminal in Jow to be performed in order to increase the electrical performance and signal stability of the electronic device. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
In re claim 16, as applied to claim 15 above, Jow in combination with Hsu discloses wherein forming the package structure 50 includes performing a molding process with a mold feature (a upper mold 92 and a lower mold 94) engaging a surface of the metal terminal to create the opening 60 of the package structure 50 (see paragraphs [0027], [0028], [0029] and fig. 5B of Jow).
In re claim 17, as applied to claim 16 above, Jow in combination with Hsu discloses wherein attaching the electronic component 28 includes soldering (via soldering material 280) a terminal of the electronic component 28 to the metal terminal to couple the electronic component 28 to the circuit (see paragraphs [0053], [0054] and fig. 2F of Hsu).
In re claim 19, as applied to claim 15 above, Jow in combination with Hsu discloses wherein attaching the electronic component 28 includes soldering (via a soldering material) a terminal of the electronic component 28 to the metal terminal 240 to couple the electronic component 28 to the circuit (see paragraphs [0053], [0054] and fig. 2F of Hsu).
Claim(s) 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jow (U.S. Pub. 2008/0067641) in view of Hsu et al. (U.S. Pub. 2015/0359096), as applied to claims 16 and 19 above, respectively, and further in view of Lee et al. (U.S. Pub. 2011/0278054).
In re claims 18 and 20, as applied to claims 16 and 19 above, respectively, Jow and Hsu dare silent to wherein attaching the electronic component includes: dispensing solder paste on the metal terminal; attaching a terminal of the electronic component on the solder paste; and reflowing the solder paste to couple the electronic component to the circuit.
However, Lee discloses in a same field of endeavor, a method for fabricating a semiconductor device, including, inter-alia, wherein attaching the electronic component includes: dispensing solder paste on the metal terminal; attaching a terminal of the electronic component on the solder paste; and reflowing the solder paste to couple the electronic component to the circuit (see paragraph [0007]).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Lee into the method of fabricating the electronic device of Jow in order to enable the step of attaching the electronic component includes: dispensing solder paste on the metal terminal; attaching a terminal of the electronic component on the solder paste; and reflowing the solder paste to couple the electronic component to the circuit in Jow to be performed in order to increase the electrical performance and signal stability of the electronic device. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
Claim(s) 28 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jow (U.S. Pub. 2008/0067641) in view of Udayakumar et al. (U.S. Pub. 2008/0303141).
In re claim 28, Jow discloses an electronic device 10, comprising: a semiconductor die 40 attached to a substrate 15 and coupled to a circuit of the electronic device (see paragraphs [0021], [0023] and figs. 2-4), note that, the semiconductor die is coupled to the circuit via wires 80); an electronic component 70 coupled to the circuit (see paragraph [0023] and figs. 2-4); and a package structure 50 that encloses the semiconductor die 40, the package structure having an opening 60 that exposes a portion of the electronic component 70 (see paragraph [0023] and fig. 3).
Jow is silent to wherein the opening is a tapered opening.
However, Udayakumar discloses in a same field of endeavor, an electronic device 200 including, inter-alia, a package structure 310 having a tapered opening 410 that exposes a portion of the electronic component 220 (see paragraph [0029] and fig. 4).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventio to be motivated to incorporate the technique as taught by Udayakumar into the electronic device of Jow in order to enable a tapered opening that exposes a portion of the electronic component in Jow to be formed in order to avoid overetching in the opening (see paragraph [0029]). Furthermore, it is respectfully submitted that, the configuration regarding about the shape of the opening was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
In re claim 29, as applied to claim 28 above, Jow in combination with Udayakumar discloses wherein no portion of the package structure 50 contacts the electronic component 70 (see paragraph [0023] and fig. 3 of Jow).
Allowable Subject Matter
Claims 4-7 and 12-14 are allowed over prior art of record.
Claims 21-27 are 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.
Reasons For Allowance
The following is an examiner’s statement of reasons for allowance:
It is determined that the prior art of record neither anticipates nor renders obvious the claimed subject matter of independent claims 4 and 12 as a whole taken alone or in combination, in particular, prior art of record does not teach “a second semiconductor die attached to the substrate and having a second transistor with a drain coupled to the second metal terminal and a source coupled to the switching mode, the first conductive lead is coupled to the first metal terminal to form a reference node of the circuit, the second conductive lead is coupled to the switching mode of the circuit, and the third conductive lead is coupled to the second metal terminal to form an input node of the circuit", as recited in independent claim 4 and “the electronic device includes a second semiconductor die, first, second, and third conductive leads, and first and second metal terminals, the semiconductor die is a first semiconductor die attached to the substrate and having a first transistor with drain coupled to a switching node of the circuit and a source coupled to the first metal terminal, the second semiconductor die is attached to the substrate and has a second transistor with drain coupled to the second metal terminal and a source coupled to the switching mode, the first conductive lead is coupled to the first metal terminal to form a reference node of the circuit, the second conductive lead is coupled to the switching node of the circuit, and the third conductive lead is coupled to the second metal terminal to form an input node of the circuit”, as recited in independent claim 12.
Claims 5-7, 13, and 14 also allowed as being directly or indirectly dependent of the allowed independent base claims.
Conclusion
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/KHIEM D NGUYEN/Primary Examiner, Art Unit 2892