Notice of 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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/26/2026 has been entered.
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)(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.
Claims 12-14, 16 and 31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sakuma et al. (US 2023/0163100 A1).
Regarding independent claim 12: Sakuma teaches (e.g., Figs. 6-7) an apparatus, comprising:
a substrate ([0103] and [0108]: 120/131);
a die assembly ([0107]-[0108]: 105/730/750) coupled to the substrate,
the die assembly including a spacer ([0107]-[0108]: middle portion of 730 keeps a constant space between the die and the upper structure, thus serves as a spacer and meets the claim limitation requirement) and
a semiconductor die ([0108]: 105); and
a protection dam ([0107]: 150) disposed on the substrate (120/131) around the semiconductor die (105) and around at least a portion of the spacer (middle portion of 730).
Regarding claim 13: Sakuma teaches the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam (150) is attached to the substrate (120/131).
Regarding claim 14: Sakuma teaches the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam (150) is integrated into the substrate (120/131).
Applicant is reminded that make a device integral does not differentiate the claimed invention from the prior arts.
In reLarson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.”); but see Schenckv.Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form “a single integral and gaplessly continuous piece.” Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.). MPEP 2144.04V(B).
Regarding claim 16: Sakuma teaches the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam (150) includes an extension configured as a solder barrier (protection dam 150 extends vertically and is configured as a solder barrier).
Regarding claim 31: Sakuma teaches the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam (150) includes an inner side facing the semiconductor die (105) and at least a portion of the spacer (730), and an outer side opposite the inner side (inherent), the apparatus further comprising:
molding material (350) in contact with the spacer (730), the inner side of the protection dam (150), and the outer side of the protection dam (150).
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 12-14, 16 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Wensel (US 5,989,941 A) in view of Kadoguchi et al. (US 2017/0141068 A1).
Regarding independent claim 12: Wensel teaches (e.g., Figs. 1-4) an apparatus, comprising:
a substrate (Col. 2; Lines 39-50: #12);
a die assembly (Col. 2; Lines 39-50: #22/24) coupled to the substrate,
the die assembly including a semiconductor die (Col. 2; Lines 39-50: #22); and
a protection dam (Col. 3, Lines 16-25: #18) disposed on the substrate (12) around the die assembly (Col. 2; Lines 39-50: #22/24);
Wensel does not expressly teach a spacer, and a protection dam around at least a portion of the spacer.
Kadoguchi teaches (e.g., Figs. 14-21) an apparatus comprising a die assembly ([0072]-[0073]: 50);
Kadoguchi further teaches that the die assembly includes a spacer ([0073]: 72; 74) and a semiconductor die ([0073]: 52).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the apparatus of Wensel, the die assembly including a spacer, as taught by Kadoguchi, for the benefits of providing mechanical support to the device and interfacing for heat transfer to the heat sink and thus improving device reliability.
Thus, Wensel as modified by Kadoguchi teaches that the protection dam is around at least a portion of the spacer, since the protection dam 18 of Wensel is around the die 22 and the spacer 72 of Kadoguchi is on top of the die 52 of Kadoguchi.
Regarding claim 13: Wensel and Kadoguchi teach the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam (Wensel: 18) is attached to the substrate (Wensel: 12).
Regarding claim 14: Wensel and Kadoguchi teach the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam (Wensel: 18) is integrated into the substrate.
Applicant is reminded that a "product" claim is 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 Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Fitzgerald, 205 USPQ 594, 596 (CCPA); In re Marosi et al., 218 USPQ 289 (CAFC); and most recently, In re Thorpe et al., 227 USPQ 964 (CAFC, 1985) all of which make 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.
Moreover, note that making structures integral in a “product” claim does not differentiate the claimed invention from the prior art.
In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."); but see Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a hard-bearing wheel balancer) comprising a holding structure, a base structure, and a supporting means which form "a single integral and gaplessly continuous piece." Nortron argued that the invention is just making integral what had been made in four bolted pieces. The court found this argument unpersuasive and held that the claims were patentable because the prior art perceived a need for mechanisms to dampen resonance, whereas the inventor eliminated the need for dampening via the one-piece gapless support structure, showing insight that was contrary to the understandings and expectations of the art.). MPEP 2144.04(V)(B).
Regarding claim 16: Wensel and Poddar teach the claim limitation of the apparatus of claim 12, on which this claim depends,
wherein the protection dam includes an extension configured as a solder barrier (Wensel: Col. 3; Lines 10-34: the protection dam includes a lateral extension portion and material functioning as a barrier configured to block a flow of solder).
Regarding claim 28: Wensel and Kadoguchi teach the claim limitation of the apparatus of claim 12, on which this claim depends,
Wensel as modified by Kadoguchi teaches that
a height of the protection dam (Wensel: 18) is greater than a distance between the substrate (Wensel: 12) and a bottom surface of the spacer (Wensel: 18).
Claims 17 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuma et al. (US 2023/0163100 A1) and Chen et al. (US 2021/0249329 A1).
Regarding independent claim 17: Sakuma teaches (e.g., Figs. 3-7) a method, comprising:
forming a chip assembly ([0107]-[0108]: 105 and 730/750) that includes a semiconductor die ([0108]: 105);
attaching a protective dam to a substrate ([0103] and [0108]: 120/131);
coupling the chip assembly ([0107]-[0108]: 105 and 730/750) to the substrate,
the protective dam (150) being disposed around the chip assembly (105/730/750) including around at least a portion of a spacer ([0107]-[0108]: middle portion of 730 keeps a constant space between the die and the upper structure, thus serves as a spacer and meets the claim limitation requirement); and
filling remaining space around the chip assembly (105/730/750) with a molding compound ([0106]: 670).
Sakuma does not expressly teach
a semiconductor die attached to a copper spacer;
forming a direct bond metal (DBM) layer above the chip assembly.
Chen teaches (e.g., Figs. 1A-1B) a method, comprising forming a chip assembly ([0032] and [0034]: 150);
Chen further teaches
forming a semiconductor die ([0031]: 130) attached to a copper spacer ([0032]: 142);
forming a direct bond metal (DBM) layer ([0003] and [0031]: 110 is a direct bond copper (e.g., a direct bonded copper (DBC) ) above the chip assembly.
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the method of Sakuma, the semiconductor die attached to a copper spacer; forming a direct bond metal (DBM) layer above the chip assembly, as taught by Chen, for the benefits of enhancing the heat dissipation capacity if the integrated circuit and thus improve device reliability.
Regarding claim 20: Sakuma and Chen teach the claim limitation of the method of claim 17, on which this claim depends,
wherein attaching the protective dam to the substrate includes applying an adhesive (Sakuma: [0059]-[0060] and [0065]).
Regarding claim 21: Sakuma and Chen teach the claim limitation of the method of claim 17, on which this claim depends,
wherein the protective dam is metallic and attaching the protective dam to the substrate includes soldering ([0062], [0065] and [0074]).
Regarding claim 22: Sakuma and Chen teach the claim limitation of the method of claim 21, on which this claim depends,
wherein the protective dam (Sakuma: Fig. 7; # 150) comprises a first portion disposed along a lateral side of the spacer (Sakuma: Fig. 7; # 730) and a second portion extending between a bottom side of the spacer and the substrate (Sakuma: Fig. 7; # 120/131).
Claims 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (US 2013/0009298 A1) in view of Maldo (US 2020/0258824 A1), Patil (US 5,227,663 A) and Kadoguchi et al. (US 2017/0141068 A1).
Regarding independent claim 17: Ota teaches (e.g., Fig. 2) a method, comprising:
forming a chip assembly (Fig. 2; [0030]-[0031]) that includes a semiconductor die ([0031]: 3);
attaching a protective dam ([0024]: 6) to a substrate ([00021]: 1);
coupling the chip assembly to the substrate ([0033]); the protective dam being disposed around the chip assembly (Fig. 2; [0030]-[0031]); and
filling remaining space around the chip assembly with a molding compound ([0030] and [0033]: molding compound 7).
Ota does not expressly teach
a semiconductor die attached to a copper spacer,
forming a direct bond metal (DBM) layer above the chip assembly.
Maldo teaches a method (e.g., Figs. 1-2 and Fig. 3;[0007]-[0008]) comprising a chip assembly ([0032]: 340; 350);
Maldo further teaches forming a direct bond metal (DBM) layer ([0032]: 120) above the chip assembly ([0032]: 340; 350) and copper spacer ([0032]: 315).
a copper spacer ([0032]: 315),
forming a direct bond metal (DBM) layer ([0024]: substrate 120 is a direct-bonded metal (DBM) substrate) above the chip assembly).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the device of Ota, the method of forming the copper spacer and forming a direct bond metal (DBM) layer above the chip assembly, as taught by Maldo, for the benefits of supporting the leads and avoiding collapse of the interconnections and also providing a heat dissipating structure, thus improving device liability.
Additionally, Patil teaches that a protective dam can be either metal or insulating layer (Abstract; Col. 3, Lines 44-50 and Col. 11, Lines 39-34: “(53) FIGS. 4A through 4D show the "evolution" of the present invention from a plastic dam to a metal (or ceramic) dam to an integral metal dam and heat sink to a metal dam and heatsink including an external fin assembly.
It is noted that a metal layer as well as a dielectric layers are art recognized as material suitable materials for forming a protective dam.
Applicant is reminded that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
"Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.) MPEP 2144.07.
Kadoguchi teaches (e.g., Fig. 14) a method comprising forming a semiconductor die ([0068]: 54) attached to a copper spacer ([0068]: spacer 74 is a copper spacer).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the method of Ota, Maldo and Patil, the method of forming a semiconductor die attached to a copper spacer, as taught by Kadoguchi, for the benefits of improving the heat transfer from the device to the heat sink and, thus, improving device cooling during operation and thus improving device reliability.
Therefore, it is established that it would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include enable the method of Ota, Maldo, Patil and Kadoguchi and arrive at: “the protective dam being disposed around the chip assembly including around at least a portion of the spacer”, since the copper spacer is vertically on the semiconductor die and does not extend horizontally beyond the width of the semiconductor die, for the benefits of controlling the areas where the flowable molding layer is flowing.
Regarding claim 22: Ota, Maldo, Patil and Kadoguchi teach teaches teach the claim limitations of the method of claim 17, on which this claim depends,
Ota as modified by Maldo, Patil and Kadoguchi that the protective dam (Ota: 6) comprises a first portion disposed along a lateral side of the spacer (Kadoguchi: 74) and a second portion extending between a bottom side of the spacer and the substrate (Ota: Fig. 2).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (US 2013/0009298 A1) in view of Maldo (US 2020/0258824 A1) and Patil (US 5,227,663 A) and Kadoguchi et al. (US 2017/0141068 A1) as applied above and further in view of Wensel (US 5,989,941 A).
Regarding claim 20: Ota, Maldo, Patil and Kadoguchi teach the claim limitations of the method of claim 17, on which this claim depends,
Ota as modified by Maldo, Patil and Kadoguchi does not expressly teach that attaching the protective dam to the substrate includes applying an adhesive.
Wensel teaches (e.g., Figs. 1-4) a method comprising forming a protection dam (Col. 2, Lines 56-64: #18) attached to a substrate (Col. 2, Lines 40-49: 12);
Wensel further teaches that attaching the protective dam (Col. 2, Lines 56-64: #18) to the substrate (12) includes applying an adhesive (Col. 2, Lines 40-49: adhesive layer #20 was used attaching the protective dam to the substrate).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the device of Ota as amended by Maldo, the method of attaching the protective dam to the substrate including applying an adhesive layer, as taught by Wensel, for the benefits of ensuring a more robust fluid barrier, by increasing the adhesive force between the protective dam and the substrate.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (US 2013/0009298 A1) in view of Maldo (US 2020/0258824 A1) and Patil (US 5,227,663 A) and Kadoguchi et al. (US 2017/0141068 A1) as applied above and further in view of Lee et al. (US 8,441,123 B1).
Regarding claim 21: Ota, Maldo, Patil and Kadoguchi teach the claim limitations of the method of claim 17, on which this claim depends,
Ota as modified by Maldo does not expressly teach that the protective dam is metallic and attaching the protective dam to the substrate includes soldering.
However, Lee teaches (e.g., Fig. 1) a method comprising forming a protective dam (Col. 2, Lines 38-41: #413a);
Lee further teaches that the protective dam is metallic (Col. 2; Lines 38-41: #413a) and attaching the protective dam to the substrate includes soldering (Fig. 1, Col. 2, Lines 38-41: #413a; the protective dam is attached to the substrate and includes a solder, thus the attaching process is done through soldering; thus this meets the claim requirement).
It would have been obvious to a person of ordinary skill in the art at the time of the effective filing date to include in the device of Ota as amended by Maldo, Patil and Kadoguchi, the method of forming the protective dam being metallic and attaching the protective dam to the substrate that includes soldering, as taught by Lee, for the benefits of strengthen the adhesion between the metal layer and thus avoiding delamination, thus improving device reliability.
Allowable Subject Matter
Claim 15 and 19 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.
Regarding claim 15: the cited prior art of record, either singly or in proper combination, does not teach or make obvious, along with the other claimed features, an apparatus comprising:
wherein the substrate includes a metal layer; wherein the protection dam is defined by a recessed portion of a surface of the metal layer; and wherein the die assembly is coupled to the recessed portion of the surface of the metal layer”.
Regarding claim 19: the cited prior art of record, either singly or in proper combination, does not teach or make obvious, along with the other claimed features, a method comprising:
“wherein the protective dam is flexible and stretched around the chip assembly prior to coupling the chip assembly to the substrate”.
Claims 1, 4-5, 8-9, 25, 27, 29-30 are allowable.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 1: the cited prior art of record, either singly or in proper combination, does not teach or make obvious, along with the other claimed features, an apparatus comprising:
a protection dam surrounding at least a portion of a perimeter of the chip assembly, the protection dam having an inner side facing at least a portion of a sidewall of the heat sink; and
a molding material coupled to the heat sink and to at least an outer side of the protection dam, the outer side being opposite the inner side”.
Claims 4-5, 8-9, 25, 27, 29-30 depend from claim 1, and therefore, are allowable for the same reason as claim 1.
Regarding claim 23: the cited prior art of record, either singly or in proper combination, does not teach or make obvious, along with the other claimed features, a method, comprising:
“removing a portion of a metal layer of a substrate to form a protective dam and a recessed surface of the metal layer that is surrounded by the protective dam;
coupling the semiconductor die of the chip assembly to the recessed surface of the metal layer;
forming a direct bond metal (DBM) layer above the chip assembly; and filling remaining space around the chip assembly with a molding compound”.
Claims 24 depends from claim 23, and therefore, is allowable for the same reason as claim 23.
Response to Arguments
Applicant's arguments filed on 01/26/2026 have been fully considered but they are not persuasive.
Applicant is arguing the combination of references (Wensel, Kadoguchi) used in claim 12 obviousness rejection because the combination will render the device inoperable.
Similar arguments were made about the obviousness rejection of claim 17; additionally, Applicant argued that the order of manufacturing has not been disclosed by the references of record.
Examiner respectfully disagree with Applicant’s position; Examiner noted that claim 17, although a method claim, does not necessarily impose any specific manufacturing order; thus the references do not have to show a particular step or a particular order of manufacturing.
Moreover, in response to applicant's arguments, Applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Regarding the other claims, the newly amended claims including new limitations are rejected in response to the amendments, thus the arguments pertaining to these claims are considered moots.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HERVE-LOUIS Y ASSOUMAN whose telephone number is (571)272-2606. The examiner can normally be reached M-F: 08:30 AM-5:30 PM.
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/HERVE-LOUIS Y ASSOUMAN/Examiner, Art Unit 2812