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
Claim 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2026.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following title is suggested:
Clip for Leadframe Package Comprising Thinned Portions and Slot Structures for Alignment During Mounting
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, the limitation “wherein the first direction opposes the first direction” is unclear. For purposes of examination, the claim will be read as “wherein the first direction opposes the second direction”.
Regarding Claims 1 and 7, the limitation “align the main portion in a desired orientation” is indefinite as the term “desired” is subjective without further definition.
Regarding Claim 13, the limitation “the at least first alignment portion and the at least second alignment portion comprise a thickness” is unclear as to if the sum of the two alignment portions, a shared value from the alignment portions, or an actual common physical overlap comprise the “thickness”.
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.
(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.
Claim(s) 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiaochun et al. (U.S. 2005/0199985).
Regarding Claim 1, Xiaochun et al., Figures 1 and 2, discloses a clip for a semiconductor package, the clip comprising:
at least a first thinned portion coupled with a main portion, the at least first thinned portion extending in a first direction away from the main portion (main portion 102, first thinned portion 122); and
at least a second thinned portion coupled with the main portion, the at least second thinned portion extending in a second direction away from the main portion (second thinned portion 122 or 130 or portion extending from 130 or portion around hole in 102);
wherein the first direction opposes the second [first] direction; and
wherein the at least first thinned portion is configured to engage with a first thinned portion of a leadframe and the at least second thinned portion is configured to engage with a second thinned portion of the leadframe to align the main portion in a desired orientation relative to the leadframe (first thinned portion 122, second thinned portion 122 or 130 or portion extending from 130 or portion around hole in 102).
The language, term, or phrase "thinned portion" is directed towards the process of making a portion of a clip. It is well settled that "product by process" limitations in claims drawn to structure are 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 Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "thinned portion” only requires a portion of the clip that has a smaller thickness than another portion of the clip, which does not distinguish the invention from Xiaochun, who teaches the structure as claimed.
Regarding the language “the at least first thinned portion is configured to engage with a first thinned portion of a leadframe and the at least second thinned portion is configured to engage with a second thinned portion of the leadframe to align the main portion in a desired orientation relative to the leadframe" the Examiner notes this language constitutes functional language and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As best can be determined by the Examiner from the specification of the present application, the structure which performs the functions of "engage with a first thinned portion of a leadframe” and “engage with a second thinned portion of the leadframe to align the main portion in a desired orientation relative to the leadframe” is simply the existence of a first and second thinned portion that can contact a leadframe (see Paragraph 0010 of the published present application's specification), a structure which is clearly present in the device of the Xiaochun reference. Therefore, it appears the structure of Xiaochun et al. is capable of performing the function required by the claim language. Furthermore, it is noted that the claim language does not require the presence of a leadframe.
Regarding Claim 2, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 1, wherein the at least first thinned portion and the at least second thinned portion are half etched (first thinned portion 122, second thinned portion 122 or 130 or portion extending from 130 or portion around hole in 102). The language, term, or phrase "are half etched" is directed towards the process of making a portion of a clip. It is well settled that "product by process" limitations in claims drawn to structure are 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 Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language "are half etched” only requires a portion of the clip that has a smaller thickness than another portion of the clip, which does not distinguish the invention from Xiaochun, who teaches the structure as claimed.
Regarding Claim 3, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 1, wherein the at least first thinned portion and the at least second thinned portion are downset from the main portion (first thinned portion 122, second thinned portion 122 or 130 or portion extending from 130 or portion around hole in 102, main portion 102).
Regarding Claim 4, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 1, wherein the at least first thinned portion and the least second thinned portion are configured to be located outside an outline of a package that comprises the clip (portion (first thinned portion 122, second thinned portion 122 or 130 or portion extending from 130 or portion around hole in 102). Regarding the language “the at least first thinned portion and the least second thinned portion are configured to be located outside an outline of a package that comprises the clip" the Examiner notes this language constitutes functional language and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As best can be determined by the Examiner from the specification of the present application, the structure which performs the functions of "be located outside an outline of a package that comprises the clip” is simply the existence of a first and second thinned portion that can have an outline drawn between them and a different portion of the clip (see Paragraph 0048 of the published present application's specification), a structure which is clearly present in the device of the Xiaochun reference. Therefore, it appears the structure of Xiaochun et al. is capable of performing the function required by the claim language. Furthermore, it is noted that the claim language does not require the presence of a package.
Regarding Claim 5, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 1, wherein the at least first thinned portion and the at least second thinned portion are coupled with at least one lead of the main portion (lead 102 or 130 or portion under solder 154).
Regarding Claim 6, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 1, wherein the at least first thinned portion and the at least second thinned portion are coupled with an alignment portion coupled with at least one lead of the main portion (alignment portion 130 or hole in 102 or 122 or additional fork 122, [0037]).
Claim(s) 7-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiaochun et al. (U.S. 2005/0199985).
Regarding Claim 7, Xiaochun et al., Figures 1 and 2 discloses a clip for a semiconductor package, the clip comprising:
at least a first alignment portion coupled with a main portion, the at least first alignment portion extending away from the main portion (first alignment portion 122); and
at least a second alignment portion coupled with the main portion, the at least second alignment portion extending away from the main portion (second alignment portion 122);
wherein the at least first alignment portion is configured to engage with a first alignment slot of a leadframe and the at least second alignment portion is configured to engage with a second alignment slot of the leadframe to align the main portion in a desired orientation relative to the leadframe (first and second alignment portions 122).
Regarding the language “the at least first alignment portion is configured to engage with a first alignment slot of a leadframe and the at least second alignment portion is configured to engage with a second alignment slot of the leadframe to align the main portion in a desired orientation relative to the leadframe" the Examiner notes this language constitutes functional language and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As best can be determined by the Examiner from the specification of the present application, the structure which performs the functions of "engage with a first alignment slot portion of a leadframe” and “engage with a second alignment slot of the leadframe to align the main portion in a desired orientation relative to the leadframe” is simply the existence of a first and second alignment portion that can contact a first and second slot in a leadframe (see Paragraph 0043 of the published present application's specification), a structure which is clearly present in the device of the Xiaochun reference. Therefore, it appears the structure of Xiaochun et al. is capable of performing the function required by the claim language. Furthermore, it is noted that the claim language does not require the presence of a leadframe.
Regarding Claim 8, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the at least first alignment portion and the at least second alignment portion are downset from the main portion (first alignment portion 122, second alignment portion 122, main portion 102).
Regarding Claim 9, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the at least first alignment portion and the least second alignment portion are configured to be located outside an outline of a package that comprises the clip (first alignment portion 122, second alignment portion 122). Regarding the language “the at least first alignment portion and the least second alignment portion are configured to be located outside an outline of a package that comprises the clip" the Examiner notes this language constitutes functional language and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As best can be determined by the Examiner from the specification of the present application, the structure which performs the functions of "be located outside an outline of a package that comprises the clip” is simply the existence of a first and second alignment portion that can have an outline drawn between them and a different portion of the clip (see Paragraph 0043 of the published present application's specification), a structure which is clearly present in the device of the Xiaochun reference. Therefore, it appears the structure of Xiaochun et al. is capable of performing the function required by the claim language. Furthermore, it is noted that the claim language does not require the presence of a package.
Regarding Claim 10, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the at least first alignment portion and the at least second alignment portion are coupled with at least one lead of the main portion (first alignment portion 122, second alignment portion 122, lead 102 or 130 or portion under solder 154).
Regarding Claim 11, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the at least first alignment portion and the at least second alignment portion are coupled with an alignment portion coupled with at least one lead of the main portion (first alignment portion 122, second alignment portion 122, alignment portion 130 or hole in 102 or 122 or additional fork 122, lead 102 or 130 or portion under solder 154, [0037]).
Regarding Claim 12, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the at least first alignment portion and the at least second alignment portion are each a portion of a lead of the main portion (first alignment portion 122, second alignment portion 122).
Regarding Claim 13, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the at least first alignment portion and the at least second alignment portion comprise a thickness that is the same as a thickness of the leadframe (first alignment portion 122, second alignment portion 122). Regarding the language “a thickness of the leadframe” the Examiner notes this language builds on functional language found in the parent claim and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As best can be determined by the Examiner from the specification of the present application, the structure which performs the functions of "comprise a thickness that is the same as a thickness of the leadframe” is simply the existence of a first and second alignment portion that have a thickness (see Paragraph 0017 of the published present application's specification), a structure which is clearly present in the device of the Xiaochun reference. Therefore, it appears the structure of Xiaochun et al. is capable of performing the function required by the claim language. Furthermore, it is noted that the claim language does not require the presence of a leadframe.
Regarding Claim 14, Xiaochun et al., Figures 1 and 2, further discloses the clip of claim 7, wherein the first alignment slot and the second alignment slot are configured to receive an end of the at least first alignment portion and an end of the at least second alignment portion, respectively (first alignment portion 122, second alignment portion 122). Regarding the language “the first alignment slot and the second alignment slot are configured to receive an end of the at least first alignment portion and an end of the at least second alignment portion” the Examiner notes this language builds on functional language found in the parent claim and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). As best can be determined by the Examiner from the specification of the present application, the structure which performs the functions of "configured to receive an end of the at least first alignment portion and an end of the at least second alignment portion” is simply the existence of a first and second alignment portion having ends that can engage to first and second portions of a leadframe (see Paragraph 0043 of the published present application's specification), a structure which is clearly present in the device of the Xiaochun reference. Therefore, it appears the structure of Xiaochun et al. is capable of performing the function required by the claim language. Furthermore, it is noted again that the claim language does not require the presence of a leadframe and therefore does not require the presence of first and second alignment slots.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Abbigale Boyle whose telephone number is 571-270-7919. The Examiner can normally be reached from 11 A.M to 7 P.M., Monday through Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Zandra Smith, can be reached at 571-272-2429. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance form a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Abbigale Boyle
Examiner, Art Unit 2899
/ABBIGALE A BOYLE/Examiner, Art Unit 2899
/DALE E PAGE/Supervisory Patent Examiner, Art Unit 2899
Prosecution Insights