DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the following communications: the Amendment filed 1/14/2026.
Claims 1-18 are pending. Claim 18 is new.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8/3/2023, 9/13/2023, 8/30/2024, 11/26/2024 and 9/5/2025 are compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 1/14/2026 is acknowledged.
Claims 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/14/2026.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 3-8 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bolognia et al. (US 2017/0263515 A1, hereinafter “Bolognia”).
Regarding independent claim 1, Figure 1A of Bolognia discloses a system in a package (SiP) comprising:
a substrate 40 (“substrate”- ¶0020) comprising an upper surface;
a lid 20 (“lid”- ¶0020) having a lower lip surface coupled to the upper surface with a first epoxy 32 (“adhesive layers… epoxy”- ¶0032), the lid 20 further having exterior walls; and
a second epoxy 34 (“adhesive layers… epoxy”- ¶0032) coupled to the first epoxy 32 and covering the exterior walls of the lid 20.
Regarding claim 3, Figure 1A of Bolognia discloses the SiP further comprising a die 52 (“die”- ¶0022) positioned on the upper surface of the substrate 40 in an air cavity 50 (“cavity”- ¶0022) formed by the lid 20.
Regarding claim 4, Figure 1A of Bolognia discloses the SiP further comprising a chiplet 52 (“die”- ¶0022) positioned on the upper surface of the substrate 40 in an air cavity 50 (“cavity”- ¶0022) formed by the lid 20.
Regarding claim 5, Figure 1A of Bolognia discloses wherein the lid 20 further delimits an aperture (i.e., the space between substrate 40 and wall 24).
Regarding claim 6, Figure 1A of Bolognia discloses wherein the second epoxy 34 fills the aperture.
Regarding claim 7, the recited “wherein the aperture is configured to act as a vent during manufacture to prevent overpressure in an air cavity formed by the lid” (i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus. see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is the aperture, which the prior art of Bolognia clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. see also In re Ludtke, 441 F.2d 660, 664 (CCPA 1971) (citing In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on."). It is in this regard that the claim is considered met.
Additionally, the claim limitation “wherein the aperture is configured to act as a vent during manufacture to prevent overpressure in an air cavity formed by the lid” is also drawn to process steps of a product-by-process claim, such method step(s) are not considered to render an old apparatus patentable where the prior art teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. That is even though product-by-process claims are limited by and defined by the process, the determination of patentability of the claims is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. See MPEP 2113. In this regard, both claimed products and the prior art products would be the same or substantially the same.
Regarding claim 8, Figure 1A of Bolognia discloses the SiP further comprising a component 52 (“die”- ¶0022) positioned on the upper surface of the substrate 40 in an air cavity 50 (“cavity”- ¶0022) formed by the lid 20.
Regarding independent claim 18, Figure 1A of Bolognia discloses a communication device (i.e., various communication applications are listed in ¶0022) comprising:
a communication circuit positioned in a package, the package comprising:
a substrate 40 (“substrate”- ¶0020) comprising an upper surface;
a lid 20 (“lid”- ¶0020) having a lower lip surface coupled to the upper surface with a first epoxy 32 (“adhesive layers… epoxy”- ¶0032), the lid 20 further having exterior walls; and
a second epoxy 34 (“adhesive layers… epoxy”- ¶0032) coupled to the first epoxy 32 and covering the exterior walls of the lid 20.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Bolognia in view of Higashi et al. (US 2007/0108634 A1, hereinafter “Higashi”).
Regarding claim 2, Bolognia does not expressly disclose the SiP further comprising a sputtered metal layer covering the second epoxy and a top surface of the lid.
Figure 1 of Higashi discloses a semiconductor package comprising a lid 2 (“cover member”- ¶0065), an epoxy 3 (“adhesive… epoxy resin”- ¶¶0069), and a sputtered metal layer 4 (“coating… of nickel (Ni) and gold (Au)”- ¶¶0069, 0082) covering the epoxy 3 and a top surface of the lid 2.
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bolognia such that the SiP further comprises a sputtered metal layer covering the second epoxy (analogous to the epoxy in Higashi) and a top surface of the lid as taught by Higashi for the purpose of preventing the penetration of moisture into the package, thereby improving the air tightness and further providing high reliability free from pin holes (Higashi ¶0077).
Note, regarding the claim limitation “sputtered metal layer” (emphasis added) which is drawn to process steps of a product-by-process claim, such method step(s) are not considered to render an old apparatus patentable where the prior art teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. That is even though product-by-process claims are limited by and defined by the process, the determination of patentability of the claims is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. See MPEP 2113. In this regard, both claimed products and the prior art products would be the same or substantially the same.
Regarding claim 11, the combined teachings, particularly Higashi discloses wherein the sputtered metal layer 4 comprises a plurality of metal layers (i.e., nickel and gold layers- ¶¶0069, 0074-0075).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over the combined teachings of Bolognia and Higashi in further view of Koike et al. (US 2022/0324231 A1, hereinafter “Koike”).
Regarding claim 12, the combined teachings, particularly Higashi discloses wherein the plurality of metal layers comprises at least a nickel layer (¶0069), and which is used to protect from moisture (¶0077).
Higashi does not expressly disclose wherein the plurality of metal layers comprises at least a stainless steel and a copper layer.
Figure 9 of Koike discloses a semiconductor package comprising a metal layer 210 (“moisture-resistant protective film”- ¶0254) comprising a nickel or copper layer, and which is used to protect from moisture (¶0254).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined teachings such that wherein the plurality of metal layers comprises at least a copper layer as taught by Koike for the purpose of substituting art recognized equivalents known to be used for the same purpose (MPEP 2144.06), specifically utilizing a suitable and well-known type of metal layer used to protect from moisture (Koike ¶0254).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bolognia in view of Chengalva et al. (US 2005/0077614 A1, hereinafter “Chengalva”).
Regarding claim 9, Figure 1A of Bolognia discloses wherein the substrate 40 comprises any suitable material such as a ceramic material (¶0021).
Bolognia does not expressly disclose wherein the substrate comprises an FR4 material.
Figure 2 of Chengalva disclose a semiconductor package comprising a substrate 18 (“substrate”- ¶0018) which comprises a ceramic or FR4 material (¶0018).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bolognia such that the substrate comprises an FR4 material as taught by Chengalva for the purpose of substituting art recognized equivalents known to be used for the same purpose (MPEP 2144.06), specifically utilizing a suitable and well-known substrate material (Chengalva ¶0018).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bolognia in view of Achehboune et al. (US 2020/0304920 A1, hereinafter “Achehboune”).
Regarding claim 10, Figure 1A of Bolognia discloses wherein the lid 200 comprises any suitable material such as a composite material (¶0021).
Bolognia does not expressly disclose wherein the lid comprises an FR4 material.
Figure 4 of Achehboune disclose a semiconductor package comprising a lid 410 (“cover”- ¶0057) which comprises a FR4 material (¶0057), which is a type of composite material.
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bolognia such that wherein the lid comprises an FR4 material as taught by Achehboune for the purpose of substituting art recognized equivalents known to be used for the same purpose (MPEP 2144.06), specifically utilizing a suitable and typical type of composite material for a lid (Achehboune ¶0057).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Saito et al. (US 2023/0209789 A1), which discloses a semiconductor package comprising metal layers covering an epoxy on a substrate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY C CHANG whose telephone number is (571)272-6132. The examiner can normally be reached Mon- Fri 12pm-10pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano can be reached at (571)-272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY C CHANG/Primary Examiner, Art Unit 2817