Attorney’s Docket Number: 0941-4908PUS1
Filing Date: 2/9/2023
Claimed Priority Date: 1/3/2023 (TW 112100022)
Inventor: Huang
Examiner: Marcos D. Pizarro
DETAILED ACTION
This Office action responds to the amendment filed on 12/1/2025.
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 12/1/2025 in reply to the Office action in paper no. 7, mailed on 9/4/2025, has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 1-5, 8, 9 and 11-17.
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 insulating portions of adjacent contact that are in partial contact, as it is recited in claim 1, must be shown or the features canceled from the claims. 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 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.
Claim 8 is rejected under 35 U.S.C. 112(d) as being of improper dependent form.
Dependent claim 8 is improper 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. Claims 8 is improper because the claim on which it depends from has been cancelled.
Applicant may cancel the claim, amend the claim to place it in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
Claims 1-5 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite.
The claims are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims recite that the insulating portions of adjacent contacts are in partial contact with each other via the gap. The term “partial contact” is a term of degree. However, the specification does not provide any objective boundary, definition, or standard for determining what constitutes “partial contact” as opposed to full contact, bonded contact, surface-to-surface engagement, point contact, incidental touching, or mere proximity within the gap.
The specification does not describe any measurable parameter, e.g., contact area, overlap percentage, dimensional range, bonding condition, structural configuration, or functional limitation, that would allow one of ordinary skill in the art to determine when the claimed condition is satisfied and when it is not.
Because the specification provides no guidance for distinguishing partial contact from other forms of contact or non-contact, the scope of the claim is not reasonably certain. A person of ordinary skill in the art would not be able to determine, with reasonable certainty, whether a given device falls within or outside the scope of the claim.
Accordingly, the claims are indefinite.
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.
Claims 1-5 and 11 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claim 1 recites that the insulating portions of adjacent contacts are in partial contact with each other via the gap, wherein the insulating portions comprise benzocyclobutene (BCB).
The specification and drawings uniformly disclose embodiments in which the insulating portions of adjacent contacts 16 are separated by a gap 22 and are not in contact with each other (see, e.g., figs. 1-4 and 5F). The manufacturing description expressly teaches that, due to sufficient spacing and appropriate insulating material quantity subjected to reflow, the insulating material of adjacent contacts will not be bonded to each other due to excessive outward extension so that the appropriate size of the gap 22 between the contacts 16 can still be maintained (see, e.g., par. 0062). This teaching describes structures and processing conditions specifically directed toward preventing outward extension and contact.
The only reference to partial contact appears in a generalized statement saying that “the disclosure is not limited thereto” and that the insulating portions of adjacent contacts “can extend outward…to form a state of partial contact with each other.” (see, e.g., par.0021//ll.12-19). This statement is unsupported by any figure, structural depiction, dimensional relationship, process parameter, or working example illustrating such a configuration.
Moreover, the specification provides no definition, criteria, or structural boundary distinguishing “partial contact” from full contact, bonding, or simple adjacency. There is no disclosure of contact area, overlap percentage, point contact versus surface contact, mechanical versus bonded contact, or any measurable characteristic that would identify the claimed state. In the absence of such description, the specification does not demonstrate possession of a defined structural configuration corresponding to “partial contact.”
A conclusory statement of possible variation, without accompanying structural detail or definitional boundaries, does not reasonably convey to one of ordinary skill in the art that the inventors were in possession of the claimed configuration at the time of filing.
Accordingly, the specification lacks adequate written description because it fails to demonstrate possession of insulating portions of adjacent contacts being in partial contact via the gap as it is now being claimed.
Claims 1-5 and 11 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement.
The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites that the insulating portions comprising BCB of adjacent contacts are in partial contact with each other via the gap. The specification provides process guidance directed toward preventing outward extension and bonding of insulating material between adjacent contacts, including sufficient spacing, appropriate material quantity, and reflow conditions governed by capillary behavior (see, e.g., par.0062). These teachings explain how to maintain separation between insulating portions. The specification does not disclose process parameters, spacing tolerances, material volume ranges, viscosity characteristics, reflow temperature profiles, time conditions, or any working example that would instruct one of ordinary skill how to intentionally achieve partial contact between adjacent insulating portions.
Further, the specification provides no objective criteria or structural boundaries defining what constitutes a “partial contact” as opposed to a full contact, bonding, or separation. Without any disclosed threshold, dimensional limit, or qualitative distinction, one skilled in the art would not know when the claimed condition has been achieved or when it falls outside the claimed scope. This absence of definitional guidance materially expands the scope of the claims while providing no corresponding enabling disclosure.
In view of (1) the disclosure’s affirmative teaching to avoid contact, (2) the absence of concrete guidance for producing partial contact, and (3) the lack of objective boundaries distinguishing partial from full contact, one of ordinary skill in the art would be required to engage in substantial and unpredictable trial-and-error experimentation to determine what spacing, BCB volume, or reflow conditions would yield the claimed configuration.
Because the specification fails to teach how to make and use the claimed partial-contact arrangement across its full scope without undue experimentation, the claims are not enabled.
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 Marcos D. Pizarro at (571) 272-1716 and between the hours of 9:00 AM to 7:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Marcos.Pizarro@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.
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/Marcos D. Pizarro/Primary Examiner, Art Unit 2814
MDP/mdp
February 16, 2026