Attorney’s Docket Number: P202100263US02
Filing Date: 03/07/2023
Claimed Priority Date: 06/15/2021 (17/348,162)
Applicants: Sakuma
Examiner: Aneesa Baig
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 .
Acknowledgement
Applicant's amendment filed on 05/01/2026 has been entered in response to Non-final OA dated 02/20/2026. The present Office action is made with all the suggested amendments being fully considered. Applicant cancelled claims 2,7 and amended all claims. Accordingly, pending in this application are claims 1,3-6,8,9.
Response to Amendment
Applicant’s amendments to the Claims have overcome the claim rejections under U.S.C. 112, in the previous Office action of 02/20/2026. Additional rejections are below.
Applicants’ amendments have overcome the previous rejections under U.S.C. 102 and U.S.C. 103, however, the previously presented prior art remains relevant, and new grounds for rejection are presented below, as necessitated by Applicant’s amendments.
Claim Rejections - 35 USC § 112
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.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 recites “the one or more pads of the solder substrate comprises of copper, nickel and palladium”; however, in Fig. 1,2 and Par. [0003], [0024] it is disclosed that the pads are disposed on a laminate substrate, not on solder material. The specification does not include an embodiment where the pads are on a solder substrate. Examiner understands this claim to recite –laminate substrate--.
The applicant may cancel the claim, amend the claim, or demonstrate explicit support for the claimed subject matter in the original disclosure (e.g., by citing specific excerpts from Specification or features in Drawings related to the claimed embodiment, as originally filed). A broad statement alleging support for the claimed subject matter will be considered non-persuasive.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 6, 8 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form 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. Claim 6 contains language identical to claim 1, i.e. the solder substrate is comprised or made of silicon material.
Claim 8 is similar to claim 1 language including “the one or more pads of the laminate substrate comprises of copper, nickel and palladium and there is no pre-solder on the one or more pads.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the 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.
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 1,6,8 are rejected under 35 U.S.C. 103 as being unpatentable over Hotchkiss (US 5909634 A, Hereinafter Hotchkiss) in view of Yuan et al (TW 201309843 A (PDF provided), Hereinafter Yuan) further in view of Dang et al (US 20150035554 A1, Hereinafter Dang).
Regarding Claim 1, Hotchkiss (e.g., Fig 10, Col 7 line 20-64 ) shows a solder-transfer structure associated with IC packaging comprising:
a top structure configured to deposit one or more solder materials comprising:
a solder substrate comprising silicon (e.g.,111, “suitable materials include plastic, aluminum, silicon );
a laser ablation layer disposed on the substrate (e.g., 1012 “release layer may be decomposed using light (e.g., Col 7 line 20-64”); and
the one or more solder materials disposed on the laser ablation layer (e.g., solder 113), wherein the one or more solder materials comprises of one or more pillars of solder and the one or more pillars of solder are a tower shape (e.g., Fig 6 113 on substrate 111 is a cube or rectangular tower shape)
a bottom structure configured to receive the top structure ([0084]) comprising:
a laminate substrate (e.g., substrate below pads 412);
one or more pads disposed on the laminate substrate (e.g., contact pads 412) wherein the one or more pads comprise copper, nickel, and palladium and include no pre-solder;
While Hotchkiss shows the alignment of solder to contact pads, it does not disclose the following:
one or more pad finishing layers located on the one or more pads.
Yuan (e.g., Fig 1, 2, 5, [0015]-[0017]), on the other hand and in a related field of pads to contact solder materials, teaches multi-layered plating over a pad, with the top most layer being Au. Yuan teaches this structure to reduce the stress of the plating layers on a pad ([0004]) and to reduce the overall pitch of the pads (See distance “d” in Figure 1 and [0017]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Hotchkiss with the structure of Yuan to enable a finer pitch and to reduce stress of the overall plating on a contact pad to a solder.
While Hotchkiss shows a release layer attached with solder materials and with the ability to be decomposed with light, it does not show the layer comprises a thin metallic layer that is mid-wavelength infrared radiation-absorbing material with an adhesive layer disposed between the laser ablation layer, wherein the adhesive layer comprises of metallic particles.
Dang (e.g., Fig 2,[0010]-[0035] [0022]), on the other hand and in a related field of release laser ablation layers, teaches using a substrate (Handler wafer 22, could be made of glass or silicon [0027] [0029]) with a laser ablation layer made of a thin metal layer ( 25 [0030]-[0031]) and an adhesive layer comprised of metallic materials (24, adhesive layer with metallic particles [0025]) disposed between a silicon layer and the device layer. Dang teaches this structure using laser ablation to release a device structure from a glass or silicon substrate to provide high ablation efficiency with low ablation energy thresholds and enable the quick release of the structure form the glass or silicon substrate.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the release layer and adhesive layer in the structure of Hotchkiss, as taught by Dang, to enable a more efficient laser ablation process.
Regarding the limitation of the composition of the pads, Hotchkiss shows contact pads to receive solder materials, however, it is silent about the multilayer composition and the spacing of pads.
Yuan (e.g., Fig 1, 2, 5, [0015]-[0017]), on the other hand and in a related field teaches multilayered pads comprising of copper (e.g., 10), nickel (e.g., 12) and palladium (e.g., 14) with a top layer of gold (e.g., 16). There is no pre-solder on the pad, and due to the thin layers of Ni included, the pitch can be reduced from conventional multi-layer pad structures (See distance “d” in Figure 1 and [0017]).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the multi-layer contact pad in the structure of Hotchkiss, as taught by Yuan to enable a finer pitch and to reduce stress of the overall plating on a contact pad to a solder .
Regarding Claim 6, See comments from claim 1, as they would be considered repeated here.
Regarding Claim 8 See comments from claim 1, as they would be considered repeated here.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hotchkiss/Yuan/Dang further in view of Irsigler et al (US 20080099925 A1, Hereinafter Irsigler), further in view of Lu et al (US 20150061116 A1, Hereinafter Lu).
Regarding claim 3, while Hotchkiss/Yuan/Dang shows a solder layer that is a tower shape, it is silent about the tower shape with a height width aspect ratio between 1:1 to 10:1.
Irsigler (e.g., Fig 1-3B [0001]-[0006]), on the other hand and in a related field of solder bumps teaches a structure of solder pillars with high aspect ratio of height: width between 1-10 (e.g., Fig 3B, [0031]). Irsigler also teaches that the advantage of pillar solders as opposed to sphere bumps is the ability to form finer pitch connections with a reduced possibility of shorting (e.g., [0003][0004]).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the pillar bumps in the structure of Hotchkiss in view of Yuan, as taught by Irsigler to reduce the pitch of solder connections.
With regard to the shapes of the pillars of solder (cylindrical, rectangular, hexagonal, prisms) it is noted that all the shapes are a subset of a tower shape, and while Hotchkiss/Yuan/Dang discloses tower shapes, it is silent about other shapes or the tower.
However, it is noted that the specification fails to provide teachings about the criticality of having a cylindrical rod shape, rectangular shape, hexagonal shape and prisms shape as claimed in the instant application.
Therefore, absent any criticality, this limitation is only considered to be an obvious modification of the tower shape disclosed by Hotchkiss/Yuan/Dang as the courts have held that a change in shape or configuration, without any criticality, is within the level of skill in the art, and the particular tower shape claimed by applicant is nothing more than one of numerous tower shape that a person having ordinary skill in the art will find obvious to provide using routine experimentation as a matter of choice or based on its suitability for the intended use of the invention. See In re Daily, 149 USPQ 47 (CCPA 1976).
Furthermore, the claimed tower shape is known in the art: Lu (e.g., Fig 3, [0029], in the same field of endeavor teaches that the shape of a conductive post can be various cross-sectional shapes such as circular shape, quadrilateral shape, triangular shape or polygonal shape, etc. Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the shape a cylindrical rod shape, rectangular shape, hexagonal shape and prisms shape in the structure of Hotchkiss/Yuan/Dang further in view of Irsigler, because the shapes are known in the semiconductor art for its use as conductive pillars, as suggested by Lu, and implementing a known structure shape for its conventional use/purpose would have been a common sense choice by the skilled artisan. KSR Int’l Co. v. Teleflex Inc., 550 U.S, 82 USPQ2d 1385 (2007).
Claim 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hotchkiss/Yuan/Dang further in view of Sakurai (US 20140010991 A1, Hereinafter Sakurai).
Regarding Claim 4, while Hotchkiss shows solder materials, it is silent about the solders made of powder in the shape of a ball with a diameter of 10um.
Sakurai (e.g., Fig 1, Fig 3a [0008]-[0020],[0109]-[0110]), on the other hand and in a related field of solders, teaches solder balls (e.g., 3) made of a powder with a diameter between 2-12 um to be applied to a receiving structure with contact pads allowing solder powders (e.g., 3) to selectively attach onto pads. Sakurai also mentions that the structure used is advantageous to allow for formation of bumps with a smaller pitch [0020]).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the solder balls with a diameter of less than 10um in the structure of Hotchkiss in view of Yuan, as taught by Sakurai, to form solder connections with a narrow pitch and as it has been held by the court that a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. See In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hotchkiss/Yuan/Dang further in view of Takagi (US 20200357950 A1, Hereinafter Takagi).
Regarding Claim 5, Hotchkiss/Yuan/Dang shows that the release layer may be silicon or glass. However, it is silent about the material specifically designed to absorb UV light and to have a thickness of 100nm-300nm.
Takagi (e.g., Fig 8 [0053]-[0058]), on the other hand and in a related field of release layers, teaches a UV absorbing material with a thickness of 100nm to 500nm on a glass substrate. Takagi also teaches that the thickness of the resin material of the release layer may be determined in advance by experiment such that the resin material of the release layer (e.g., 13) has a thickness in the foregoing thickness range after curing.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed, to form the release layer in structure of Hotchkiss in view of Yuan, with the thickness range taught by Takagi, as it has been held by the court that a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. See In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hotchkiss/Yuan/Dang further in view of Choi (US 20140117070 A1, Hereinafter Choi).
Regarding Claim 9, Hotchkiss (e.g., Fig 5 and 6) shows bumps made from solder paste (e.g., Hotchkiss, solder paste comprises solder particles with flux [e.g., col 3 line 65- col 4 line 100] in a shape of a cube using a solder decal (e.g., 110) on a substrate, however, it is silent about the size of the solder cubes.
Choi (e.g., Fig 6, 10, 12 [0014][0057]), on the other hand and in a related field of bump formation, also using a solder decal or “bump maker” (e.g., trench 60 in Fig 10), teaches, that a dimension 10um or less can be achieved using a bump maker, or decal by providing a solder powder aggregated on the decal using heating.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the solder cubes with a diameter of less than 10um in the structure of Hotchkiss/Yuang/Dang, as taught by Choi, to form solder connections with a narrow pitch and as it has been held by the court that a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. See In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Response to Arguments
Applicant’s arguments with respect to the claims filed on 05/01/2026 have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANEESA RIAZ BAIG whose telephone number is (571)272-0249. The examiner can normally be reached Monday-Friday 8am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached at 5712721705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANEESA RIAZ BAIG/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814
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