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 .
Election/Restrictions
Applicants’ election without traverse of Invention I, claims 1-17, and Species A, claims 1-10 and 13-17, in the reply filed on 28 May 2026 is acknowledged. Claims 11, 12, and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. The restriction and election requirements are deemed proper and made final.
Response to Amendment
The Office acknowledges receipt on 28 May 2026 of Applicants’ amendments in which claims 11, 12, and 18-20 are withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Independent claim 13 recites a “means for holding.” The instant specification identifies in paragraph [0030] a “ball head” as the structure for entirely performing the recited function.
Independent claim 13 also recites a “means for flattening.” The instant specification identifies in paragraph [0034] “protrusions” as the structure for entirely performing the recited function.
For each of the two above-identified features, claim 13 uses the term “means” followed by the transitional word “for” and functional language of “holding,” in the former instance, and “flattening,” in the latter. Additionally, for each instance, the “means” is not modified by sufficient structure, material, or acts for performing the claimed function.
Accordingly, claim 13 and its dependent claims 14-17 will be interpreted under 35 U.S.C. 112(f).
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, 2, 4, 8, 9, 13, 14, 16, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oh et al. (US20200043854A1).
Regarding claim 1, Oh teaches in Fig. 11 an apparatus comprising:
a ball head (300) including a first surface (300U) having an array of holes (310), the array of holes (310) to hold a corresponding array of solder balls (500) to be placed on a package substrate (600) of an integrated circuit package (600, 700, 800, 900) {Figs. 9, 11; [0036, 0060, 0064]}; and
a protrusion (410/412) extending away from the first surface (300U) of the ball head (300), the protrusion (410/412) positioned relative to the holes (310) to contact a second surface (600L) of the package substrate (600) when the solder balls (500) are to be placed on the package substrate (600) {Fig. 11; [0064]} {see Examiner’s Note, below}.
Examiner’s Note: The limitations of: (1) “to hold a corresponding array of solder balls,” (2) “to be placed on a package substrate of an integrated circuit package,” and (3) “to contact a second surface of the package substrate when the solder balls are to be placed on the package substrate” are each directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 2, Oh teaches the apparatus of claim 1, and Oh further teaches wherein the protrusion (410) is to extend away from the first surface (300U) by a first distance, and the solder balls (500), when held in the holes (310), are to extend away from the first surface (300U) by a second distance, the first distance greater than the second distance {Fig. 11} {Fig. 11; [0064]} {see Examiner’s Note, below}.
Examiner’s Note: The limitation of “solder balls, when held in the holes, are to extend away from the first surface by a second distance, the first distance greater than the second distance” is directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 4, Oh teaches the apparatus of claim 1, and Oh further teaches wherein the protrusion (410) is positioned relative to the holes (310) to contact the second surface (600L) of the package substrate (600) at a point spaced apart from a solder resist (solder resist material of 600) on the package substrate (600) and spaced apart from openings (openings filled by 620) in the solder resist (solder resist material of 600), the openings (openings filled by 620) corresponding to where the solder balls (500) are to be placed on the package substrate (600) {Fig. 11; [0076]} {see Examiner’s Note, below}.
Examiner’s Note: The limitations of: (1) “is positioned relative to the holes to contact the second surface of the package substrate at a point spaced apart from a solder resist on the package substrate and spaced apart from openings in the solder resist” and (2) “the openings corresponding to where the solder balls are to be placed on the package substrate” are each directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 8, Oh teaches the apparatus of claim 1, and Oh further teaches wherein the protrusion (410) is elongate in a direction extending along the first surface (300U) {Fig. 1; [0038]}.
Regarding claim 9, Oh teaches the apparatus of claim 1, and Oh further teaches wherein the protrusion (410/412) has a width that is approximately equal to a diameter of the solder balls (500) {see annotated copy of zoomed-in portion of Oh’s Fig. 11 below} {see Examiner’s Note, below}.
Examiner’s Note: The limitation of “a width that is approximately equal to a diameter of the solder balls” is directed to a manner in which the claimed subject matter is intended to be employed – for the reason identified in the Examiner’s Note provided with respect to base claim 12 – and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
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Regarding claim 13, Oh teaches in Fig. 11 an apparatus comprising:
means for holding (300) an array of solder balls (500/510) to be placed in solder resist openings (openings filled by 620) on a package substrate (600) {Figs. 8, 11; [0036, 0040]}; and
means for flattening (410) the package substrate (600) when the solder balls (500/510) are to be placed on the solder resist openings (openings filled by 620), the means for flattening (410) protruding from the means for holding (300) {Fig. 11; [0064]} {see Examiner’s Note, below}.
Examiner’s Note: The limitations of: (1) “an array of solder balls to be placed in solder resist openings on a package substrate” and (2) “when the solder balls are to be placed on the solder resist openings” are each directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 14, Oh teaches the apparatus of claim 13, and Oh further teaches wherein the means for flattening (410) is to contact the package substrate (600) without the solder balls (510) touching the package substrate (600) {Fig. 9} {see Examiner’s Note, below}.
Examiner’s Note: The limitation of “is to contact the package substrate without the solder balls touching the package substrate” is directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 16, Oh teaches the apparatus of claim 14, and Oh further teaches wherein the means for flattening (410) is distributed at different locations on the means for holding (300) {implicit because the means for flattening cannot realistically exist as a dimensionless point in space}.
Regarding claim 17, Oh teaches the apparatus of claim 16, and Oh further teaches wherein the different locations correspond to different corners of the array of solder balls (500) {Fig. 1}.
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) 3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh as applied to claim 2 (for claim 3) and claim 1 (for claims 5-7) above, and further in view of Oh.
Regarding claim 3, Oh teaches the apparatus of claim 2, but Oh does not teach expressly wherein a difference between the first distance and the second distance is less than or equal to 100 microns {see Examiner’s Note, below}.
However, Oh teaches in Fig. 11 and paragraph [0064] that [t]he length 410H of the vertical portion VP may be greater than the length 420H of each of the bumps 420. And because the length 420H is the same as the second distance (i.e., the distance by which the solder balls extend above the first surface), Oh essentially teaches the first distance (i.e., the height of 410 above the first surface) is greater than the second distance (i.e., the distance by which the solder balls extend above the first surface). And because Oh does not place a minimum distance by which the first distance exceeds the second distance, such distance may have a range of infinitesimally small to any amount greater than that. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP §2144.05(I).
Examiner’s Note: The limitations of: (1) “solder balls, when held in the holes, are to extend away from the first surface by a second distance, the first distance greater than the second distance” {as recited in intermediate claim 2} and (2) “a difference between the first distance and the second distance is less than or equal to 100 microns” {as recited in claim 3} are each directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 5, Oh teaches the apparatus of claim 1, but Oh does not necessarily teach in the embodiment illustrated by Fig. 11 wherein the protrusion is one of a plurality of protrusions extending away from the first surface.
In an embodiment illustrated by Fig. 3A/3B and paragraph [0044], Oh teaches the protrusion (412) is one of a plurality of protrusions (412) extending away from the first surface (300U). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oh’s apparatus based on the further teachings of Oh – such that the protrusion is one of a plurality of protrusions extending away from the first surface – because all the claimed elements (e.g., protrusions, first surface) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (e.g., as taught by Oh) with no change in their respective functions, and the combination yielding nothing more than predictable results to one of ordinary skill in the art. MPEP §2143(I)(A). Moreover, [t]he selection of a known … [structure] based on its suitability for its intended use [is] … prima facie obviousness. MPEP §2144.07.
Regarding claim 6, Oh teaches the apparatus of claim 5, but Oh does not necessarily teach in the embodiment illustrated by Fig. 11 wherein different ones of the plurality of protrusions are positioned to contact the package substrate adjacent different corners of the package substrate {see Examiner’s Note, below}.
In an embodiment illustrated by Fig. 3A/3B and paragraph [0044], Oh teaches that different ones of the plurality of protrusions (412) are positioned to contact the package substrate (600) adjacent different corners of the package substrate (600). The motivation for this modification is identified with respect to intermediate claim 5.
Examiner’s Note: The limitation of “to contact the package substrate adjacent different corners of the package substrate” is directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Regarding claim 7, Oh teaches the apparatus of claim 1, but Oh does not necessarily teach in the embodiment illustrated by Fig. 11 wherein the protrusion has a pillar shape.
In an embodiment illustrated by Fig. 3A/3B and paragraph [0044], Oh teaches the protrusion (412) has a pillar shape. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oh’s apparatus based on the further teachings of Oh – such that the protrusion has a pillar shape – to support the weight of the package substrate. Moreover, all the claimed elements (e.g., protrusion, pillar shape) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (e.g., as taught by Oh) with no change in their respective functions, and the combination yielding nothing more than predictable results to one of ordinary skill in the art. MPEP §2143(I)(A). Furthermore, [t]he selection of a known … [structure] based on its suitability for its intended use [is] … prima facie obviousness. MPEP §2144.07.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh as applied to claim 1 above, and further in view of Fan et al. (US20070246814A1).
Regarding claim 10, Oh teaches the apparatus of claim 1, but Oh does not teach wherein the protrusion has a distal end that is rounded.
In an analogous art, Fan teaches in Fig. 3A and paragraph [0017] a protrusion (32) has a distal end that is rounded. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oh’s apparatus based on the teachings of Fan – such that the protrusion has a distal end that is rounded – because all the claimed elements (e.g., protrusion, distal end, rounded) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (e.g., as taught by Fan) with no change in their respective functions, and the combination yielding nothing more than predictable results to one of ordinary skill in the art. MPEP §2143(I)(A). Moreover, [t]he selection of a known … [structure] based on its suitability for its intended use [is] … prima facie obviousness. MPEP §2144.07. Still further, a change of shape is a matter of design choice which a person of ordinary skill in the art would have found obvious before the effective filing date of the claimed invention. MPEP §2144.04(IV)(B).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oh as applied to claim 14 above, and further in view of Oh et al. (US20210249378A1).
Regarding claim 15, Oh teaches the apparatus of claim 14, and Oh further teaches wherein the means for flattening (410) is to contact the package substrate (600) at a point spaced apart from pads on the package substrate (600), the means for holding (300) to release the solder balls (500/510) to drop onto the pads {see Examiner’s Note, below}.
Oh does not teach flux material on a package substrate.
In an analogous art, Oh ‘378 teaches in Fig. 10 and paragraph [0072] applying flux (F) to pads (25) of a substrate (2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oh’s apparatus based on the teachings of Oh ‘378 – such that flux material is disposed on the pads of the substrate – because the flux is a high viscosity material that helps the solder balls form a stronger bond with the pads when they are melted by the application of heat. Oh ‘378 [0072, 0087]. Moreover, all the claimed elements (e.g., flux material, substrate) were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (e.g., as taught by Oh ‘378) with no change in their respective functions, and the combination yielding nothing more than predictable results to one of ordinary skill in the art. MPEP §2143(I)(A). Moreover, [t]he selection of a known … [structure] based on its suitability for its intended use [is] … prima facie obviousness. MPEP §2144.07.
Examiner’s Note: The limitations of: (1) “is to contact the package substrate at a point spaced apart from flux material on the package substrate” and (2) “to release the solder balls to drop onto the flux material” are each directed to a manner in which the claimed subject matter is intended to be employed and, accordingly, each does not structurally distinguish the claimed invention from the prior art. MPEP §2114(II) – a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kim (US20210013189A1) teaches a semiconductor package includes a first semiconductor chip on a first substrate, a first molding layer covering a sidewall of the first semiconductor chip and including at least two guide holes that expose the first substrate and are spaced apart from each other in a periphery of the first substrate, a second substrate on the first molding layer, a connection terminal between the first substrate and the second substrates and connecting the first and second substrates to each other, and an alignment structure that extends from a bottom surface of the second substrate into each of the at least two guide holes of the first molding layer. A height of the alignment structure is greater than a height of the first molding layer and the first semiconductor chip.
Conclusion
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/D.W.W./ Examiner, Art Unit 2891
/MATTHEW C LANDAU/ Supervisory Patent Examiner, Art Unit 2891