Attorney’s Docket Number: 123833-US-PA
Filing Date: 2/10/2023
Claimed Priority Date: 11/24/2022 (US 63/427,904)
Inventors: Hung et al.
Examiner: Marcos D. Pizarro
DETAILED ACTION
This Office action responds to the amendment filed on 4/30/2026.
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 4/30/2026 in reply to the Office action in paper no. 5, mailed on 2/3/2026, 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 1-10 and 18-27.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Refai (US 2023/0420335).
Regarding claim 1, Refai (see, e.g., fig. 6) shows most aspects of the instant invention including a semiconductor device comprising:
A substrate 104
A first device 102A on the substrate
A second device 102C on the substrate and adjacent to the first device
A ring 502 over the substrate and the second device
A lid 504 over the ring and the first device, and
A first adhesive 144 between the lid and the ring
wherein:
The ring 504 comprises a cover 124 and a leg 114 extending out from the cover
The cover has a through opening 126
The lid comprises a body 504 and a protrusion 170 protruding from the body
The protrusion 170 is inserted into the opening 126
The adhesive 144 is between the body of the lid 504 and the cover of the ring 502
The adhesive comprises phase change thermal interface material (PC-TIM) (see, e.g., par. 0033)
Refai further teaches that the ring 502 and lid 504 may each comprise thermally conductive materials including Cu, Al, stainless steel, Ni-plated Cu, metal alloys, carbon, or mixtures thereof (¶¶ 0028, 0031, 0035). Thus, Refai teaches selecting the materials of the respective thermal-management structures from a plurality of known suitable materials.
Although Refai does not expressly state that the material of the lid is different from the material of the ring, it would have been obvious to select different materials for the respective structures from the known suitable materials disclosed by the references. Such selection would have been a routine matter of design choice based on known considerations including thermal conductivity, thermal expansion, weight, manufacturing requirements, material availability, and cost (see Boesch, 205 USPQ 215 (CCPA 1980)). This is because neither nonobvious nor unexpected results, different in kind and not merely in degree from the results of the prior art, will be obtained as long as a ring and a lid structure are used, as already suggested by Refai.
Additionally, the Supreme Court has recognized that where there are a finite number of identified, predictable solutions to a known problem, pursuing those known options may be obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Moreover, the Federal Circuit has recognized that were the general conditions of a claim are disclosed in the prior art, it may be obvious to optimize the variables within those conditions through routine experimentation. In re Aller, 220, F.2d 454, 456 (CCPA 1955), see also MPEP § 2144.05(I).
The application itself further confirms that the claimed distinction is an optional design alternative rather than a critical feature. Paragraph 0053 expressly discloses embodiments in which the lid and ring are made of the same material and alternative embodiments in which the materials are different, without identifying any particular criticality or unexpected result associated with the materials being different. Accordingly, selecting different materials for the lid and ring would have been within the ordinary skill in the art and would have yielded predictable results.
Therefore, since the applicants have not established the criticality (see next paragraph below) of the claimed limitation requiring that the material of the lid structure be different from the material of the ring structure, it would have been obvious at the time of filing the invention to a person having ordinary skill in the art (PHOSITA) to have these materials in the device of Refai.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed materials or any unexpected results arising therefrom. Where patentability is said to be based upon a variable recited in a claim, the applicant must show that the chosen variables are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 2, Refai (see, e.g., fig. 6) shows that a vertical projection of the opening 126 onto the substrate 104 is overlapped with a vertical projection of the first device 102A onto the substrate.
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Refai in view of Wang (US 2022/0359465).
Regarding claim 21, Refai (see, e.g., fig. 6) shows most aspects of the instant invention including a semiconductor device comprising:
A substrate 104
A first device 102A on the substrate
A second device 102C on the substrate
A ring 502 over the substrate and the second device
A lid 504 over the ring and the first device, and
A first adhesive 144 between the lid and the ring
wherein:
The ring comprises a cover 124, and first and third legs 114
The legs 114 are parallel to one another and perpendicular to the cover 124
The lid 504 comprises a body and a protrusion 170 protruding from the body
The protrusion 170 is between the first and third legs 114 of the ring
The adhesive 144 is between the body of the lid 504 and the cover of the ring 502
The adhesive comprises a PC-TIM (see, e.g., par. 0033)
Refai, however, fails to show the ring comprising a second leg so that the second device is located between the first and second legs, and the protrusion is between the second and third legs. Wang, in a similar device to Refai, teaches that said second leg would help reduce warpage and the possibility of damage to the second device. See, e.g., Wang: par. 0052-0053.
Accordingly, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to include the second leg of Wang in the ring of Refai to reduce warpage and protect the second device.
Regarding claim 21, see also the comments stated above in paragraphs 7-12 with respect to claim 1, which are considered repeated here.
Regarding claim 22, Wang (see, e.g., fig. 14) shows that the first device 100 is located between the second and third legs 320 of the ring 300.
Claims 1, 9, 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2015/0162307) in view of Refai and Jewram (US 2024/0400880).
Regarding claim 1, Chen (see, e.g., fig. 5A) shows most aspects of the instant invention including a semiconductor device 500 comprising:
A substrate 18
A first device 10 on the substrate
A second device 12 on the substrate and adjacent to the first device
A ring 62 over the substrate and the second device
A lid 72 over the ring and the first device, and
A first adhesive 68 between the lid and the ring
wherein:
The ring 62 comprises a cover and a leg extending out from the cover
The cover has a through opening
The lid 72/70 comprises a body 72 and a protrusion 70 protruding from the body
The protrusion 70 is inserted into the opening
The adhesive 68 is between the body of the lid 72 and the cover of the ring 62
The adhesive 68 is a TIM (see, e.g., par. 0019)
Chen, however, fails to specify that the TIM adhesive be a PC. Refai (see, e.g., fig. 8), in a similar device to Chen, teaches a PC as a TIM adhesive 144 between the body of a lid 504 and the cover of a ring 502. Jewram (see, e.g., par. 0024) found that PC materials are high-performance TIMs that exhibit low thermal resistance, reliable thermal performance, and resistance to aging.
It would have been obvious at the time of filing the invention to have the TIM of Chen be the PC-TIM suggested by Refai and Jewram such that the adhesive exhibit low thermal resistance, reliable thermal performance and resistance to aging.
Chen further teaches that the ring 62 and lid 70/72, may comprise thermally conductive metals, metal alloys, or composite materials, including Al, Cu, Ni, Co, SiC, AlN, and graphite (¶¶ 0021-0022). Thus, Chen teaches selecting from among a list of different materials having different thermal conductivities to achieve desired thermal-management characteristics (¶¶ 0026-0027). Thus, Chen teaches selecting the materials of the respective ring and lid structures from a plurality of known suitable materials.
Refai further teaches that the ring 502 and lid 504 may each comprise thermally conductive materials including Cu, Al, stainless steel, Ni-plated Cu, metal alloys, carbon, or mixtures thereof (¶¶ 0028, 0031, 0035). Thus, Refai also teaches selecting the materials of the respective thermal-management structures from a plurality of known suitable materials.
Although Chen/Refai do not expressly state that the material of the lid is different from the material of the ring, it would have been obvious to select different materials for the respective structures from the known suitable materials disclosed by the references. Such selection would have been a routine matter of design choice based on known considerations including thermal conductivity, thermal expansion, weight, manufacturing requirements, material availability, and cost (see Boesch, 205 USPQ 215 (CCPA 1980)). This is because neither nonobvious nor unexpected results, different in kind and not merely in degree from the results of the prior art, will be obtained as long as a ring and a lid structure are used, as already suggested by Chen/Refai.
Additionally, the Supreme Court has recognized that where there are a finite number of identified, predictable solutions to a known problem, pursuing those known options may be obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Moreover, the Federal Circuit has recognized that were the general conditions of a claim are disclosed in the prior art, it may be obvious to optimize the variables within those conditions through routine experimentation. In re Aller, 220, F.2d 454, 456 (CCPA 1955), see also MPEP § 2144.05(I).
The application itself further confirms that the claimed distinction is an optional design alternative rather than a critical feature. Paragraph 0053 expressly discloses embodiments in which the lid and ring are made of the same material and alternative embodiments in which the materials are different, without identifying any particular criticality or unexpected result associated with the materials being different. Accordingly, selecting different materials for the lid and ring would have been within the ordinary skill in the art and would have yielded predictable results.
Therefore, since the applicants have not established the criticality (see paragraph above) of the claimed limitation requiring that “the material of the lid structure is different from the material of the ring structure”, it would have been obvious at the time of filing the invention to a PHOSITA to have these materials in the device of Chen/Refai.
Regarding claim 9, Chen (see, e.g., fig. 5A) shows that the body and the protrusion 70 are spatially separated, and the protrusion is attached to the body through a glue layer 72c.
Regarding claim 3, Chen (see, e.g., fig. 5A) shows the device further comprising:
A second adhesive 60 between the leg of the ring 62 and the substrate 18
A third adhesive 58 between the cover 62 and the second device 12
A fourth adhesive 58 between the protrusion 70 and the first device 10
Regarding claim 5, Refai (see, e.g., par. 0033) shows that the fourth adhesive 174 comprises PC-TIM.
Regarding claim 6, Chen (see, e.g., par. 0019) shows that the fourth adhesive comprises metallic TIM.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Chen/Refai/Jewram in view of Chan (US 2020/0373220).
Regarding claim 4, Chen shows a device comprising first and third adhesives but teaches them to be similar to each other (see, e.g., par. 0024). Chan teaches altering adhesive composition to tailor mechanical and thermal properties and manufacturability, and discloses using adhesives of different compositions at different interfaces to meet differing performance and processing requirements (see, e.g., par. 0022).
It would have been obvious to one of ordinary skill to modify Chen’s adhesives by selecting different adhesives, as taught by Chan, in order to tailor the adhesives to the differing interface requirements present in Chen’s device.
Regarding claim 7, Chen teaches an electronic device 500 comprising a lid 72 and a first device 10, with a fourth adhesive 58 disposed between the lid and the first device. Chen further teaches that the fourth adhesive may be formed of a single thermal interface material, such as a polymer-TIM or a metallic-TIM, and that the adhesive functions to provide thermal coupling between the lid and the first device. See, e.g., Chen: fig. 5A and par. 0019. Refai (see, e.g., par. 0033) teaches using a PC-TIM as the fourth adhesive 174 between the lid 106 and the device 102. Jewram (see, e.g., pars.0022-0023) teaches that PC-TIMs are high-performance TIMs exhibiting low thermal resistance and reliable thermal performance, and further teaches that PC-TIMs include polymer-based TIM materials. However, they not explicitly teach the fourth adhesive comprising first and second material layers.
Chan teaches, in a device similar to that of Chen, an adhesive disposed between a lid 110 and a device 106, wherein the adhesive comprises a first material layer 104A and a second material layer 104B adjacent to the first layer, with the first material layer comprising a polymer-based TIM and the second material layer comprising a metallic TIM (see, e.g., fig. 1 and par. 0024/11-14). Chan further teaches that employing adjacent layers of different materials allows the designer to weigh and utilize different material properties to achieve desired mechanical and thermal performances and/or manufacturability, and specifically teaches that the use of multiple adjacent layers may advantageously mitigate bleed out. See, e.g., Chan: pars. 0022 and 0027.
Because Chen already teaches polymer and metallic TIMs as materials for the fourth adhesive, and Chan teaches arranging such materials as adjacent layers for known advantages, the modification would have been a predictable use of prior art elements according to their established functions, with a reasonable expectation of success.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the fourth adhesive of Chen to comprise a first material layer and a second material layer adjacent to the first layer, as taught by Chan, in order to improve thermal and mechanical performances and mitigation of bleed out. Further, it would have been obvious to select a PC-TIM for the polymer-based first material layer, as taught by Refai and Jewram, since PC-TIMs are known polymer-based TIMs suitable for use in the same application and provide predictable thermal performance benefits.
Claims 21, 26 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Wang/Refai/Jewram.
Regarding claim 21, Chen (see, e.g., fig. 5A) shows most aspects of the instant invention including a semiconductor device comprising:
A substrate 18
A first device 10 on the substrate
A second device 12 on the substrate
A ring 62 over the substrate and the second device
A lid 72 over the ring and the first device, and
A first adhesive 68 between the lid and the ring
wherein:
The ring 62 comprises a cover and first and third legs
The legs are parallel to one another and perpendicular to the cover
The lid 72 comprises a body and a protrusion 70 protruding from the body
The protrusion 70 is between the first and third legs of the ring
The adhesive 68 is between the body of the lid 72 and the cover of the ring 62
The adhesive is a TIM (see, e.g., par. 0019)
Regarding claim 21, see the comments stated above in paragraphs 16, 17 and 22-29, with respect to claims 21 and 1, which are considered repeated here.
Regarding claims 26 and 23, see the comments stated above in paragraphs 30 and 31 with respect to claims 9 and 3, which are considered repeated here.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Wang/Refai/Jewram/Chan.
Regarding claims 24 and 25, see the comments stated above in paragraphs 35-40 with respect to claims 4 and 7, which are considered repeated here.
Allowable Subject Matter
Claims 10 and 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.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new ground 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 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
July 22, 2026
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