Attorney Docket Number: 67407-973
Filing Date: 05/25/2023
Claimed Priority Date: 04/12/2023 (TW 112113617)
Inventors: Sheu et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the amendment filed on 12/16/2025.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Amendment Status
The amendment filed on 12/16/2025 in reply to the previous Office action mailed on 10/23/2025 has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 1-20, with claims 3-4 and 10-20 remaining withdrawn from consideration.
Claim Rejections
Initially, and with respect to claims 2 and 9, note that a “product by process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes 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. As stated in Thorpe,
even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
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 1-2, 5-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shen (US 2018/0061811) in view of Oh (US 2020/0043854).
Regarding claim 1, Shen (see, e.g., fig. 1F) shows most aspects of the instant invention, including a semiconductor structure 100 comprising:
a first chip 120 having an active side 122 and an opposite side 128 disposed opposite to each other;
a second chip 110 comprising a chip bonding portion 114 and an outer pad 118 located outside the chip bonding portion; and
a conductive structure 130/162 disposed on the outer pad
wherein:
the first chip 120 is disposed on the chip bonding portion 114 of the second chip 110 with the active side 122;
the conductive structure 130/162 comprises a stack of a plurality of metal balls (see, e.g., pars.0037/ll.30-34 and 0042/ll.4-5);
the stack extends from the outer pad 118 beyond the opposite side 128 of the first chip; and
a metal ball 130 of the stack of plurality of metal balls is a gold ball or a silver ball (see, e.g., par.0037/ll.26-27)
Shen shows most aspects of the instant invention. Shen further teaches that one of Shen’s metal balls 130 is a silver ball (see, e.g., par.0037/ll.26-27) and that the other 162 of Shen’s balls may comprise solder (see, e.g., par.0046/ll.10-11). However, although Shen teaches that one of Shen’s balls in Shen’s stack of metal balls is a silver ball, Shen fails to explicitly specify that the other of Shen’s metal balls (i.e., each of Shen’s metal balls) is a silver ball. Oh, in the same field of endeavor and in a similar device to Shen, teaches a semiconductor structure P1 hosting a conductive structure 500 comprising a stack of a plurality of metal solder balls 510/520 (see, e.g., Oh: fig. 2). Oh further teaches that such solder balls may be formed of a variety of conductive materials, including silver, and that such silver-formed solder balls function equivalently to solder balls formed by other metal materials (see, e.g., Oh: pars.0048/ll.17-19 and 0089/ll.15-16).
Oh is evidence showing that one of ordinary skill in the art would appreciate that a metal ball stack comprising silver metal balls would be equivalent to a metal ball stack comprising a silver metal ball and a metal ball of another metal material, and that such differences would result in no unexpected changes in the performance of the semiconductor structure of Shen. That is, the metal ball structures of both Oh and Shen would yield the predictable result of providing suitable metal balls capable of electrically connecting and communicating with various external electronic components while maintaining an appropriate configuration in a metal ball stack.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have each of the metal balls in Shen’s metal ball stack be a silver metal ball, as taught by Oh and taught by Shen for one of Shen’s metal balls, or to have only at least one of Shen’s metal balls be a silver ball, as taught by Shen, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing suitable metal balls capable of electrically connecting and communicating with various external electronic components while maintaining an appropriate configuration in a metal ball stack. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have silver as the material of Shen’s solder balls, such that each of the metal balls in Shen’s metal ball stack is a silver ball (as already taught by Shen for one of Shen’s metal balls; see, e.g., par.0037/ll.26-27), because silver is a suitable material for metal balls in a metal ball stack structure, as suggested by Oh, and because silver and other metal materials were recognized in the semiconductor art as equivalents for their use as metal ball stack materials, and because selecting a known material based on its suitability for its intended use would have been obvious to the skilled artisan. See, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 2, Shen (see, e.g., fig. 1F) shows metal balls 130/162 (see the comments stated above in paragraphs 7-11 regarding the metal balls, which are considered to be repeated here).
The language, term, or phrase “wherein the metal balls are formed by wire bonding”, is directed towards the process of making metal balls. 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 “wherein the metal balls are formed by wire bonding” only requires metal balls, which does not distinguish the invention from Shen/Oh, who teaches the structure as claimed.
Accordingly, it is noted that that Shen/Oh shows all structural aspects of the packaged device according to the claimed invention, and that the method steps of forming the metals balls through wire bonding are intermediate steps that do not affect the structure of the final device.
Regarding claim 5, Shen (see, e.g., fig. 1F and pars.0042/ll.1-3 and 0049) teaches a carrier board having a first side and a second side disposed opposite to each other, wherein the conductive structure 130/162 is connected to the first side of the carrier board.
Regarding claim 6, Shen (see, e.g., fig. 1F and pars.0042/ll.1-3 and 0049) shows an underfill layer 150 located between the first chip 120, the second chip 110, and the carrier board, and at least surrounding the conductive structure 130/162.
Regarding claim 8, Shen (see, e.g., figs. 1B and 1F and par.0038/ll.1-3) shows that the second chip 110 is larger in size than the first chip 120.
Regarding claim 9, Shen (see, e.g., fig. 1A) shows that the outer pad 118 is formed together with the chip bonding portion 114.
Nevertheless, the language, term, or phrase “wherein the outer pad is formed together with the chip bonding portion”, is directed towards the process of forming an outer pad and a chip bonding portion. 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 “wherein the outer pad is formed together with the chip bonding portion” only requires an outer pad and a chip bonding portion, which does not distinguish the invention from Shen/Oh, who teaches the structure as claimed.
Accordingly, it is noted that that Shen/Oh shows all structural aspects of the packaged device according to the claimed invention, and that the method steps of forming the outer pad together with the chip bonding portion are intermediate steps that do not affect the structure of the final device.
Claims 1-2, 5-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Shen in view of Kung (US 2009/0200651).
Regarding claim 1, to showcase an equally valid alternative reading to Shen/Oh as necessitated by Applicant’s amendments, Shen (see, e.g., fig. 1F) shows most aspects of the instant invention, including a semiconductor structure 100 comprising:
a first chip 120 having an active side 122 and an opposite side 128 disposed opposite to each other;
a second chip 110 comprising a chip bonding portion 114 and an outer pad 118 located outside the chip bonding portion; and
a conductive structure 130 disposed on the outer pad
wherein:
the first chip 120 is disposed on the chip bonding portion 114 of the second chip 110 with the active side 122;
the conductive structure 130 comprises a metal ball (see, e.g., pars.0037/ll.30-34);
the conductive structure extends from the outer pad 118 beyond the opposite side 128 of the first chip (see, e.g., par.0041/ll.7-12);
the metal ball is a gold ball or a silver ball (see, e.g., par.0037/ll.26-27)
Shen shows most aspects of the instant invention, including that Shen’s metal ball 130 in Shen’s conductive structure 130 is a gold ball or a silver ball (see, e.g., par.0037/ll.26-27) and that Shen’s device may comprise other metal balls (see, e.g., par.0046/ll.10-11). Shen further teaches that Shen’s conductive structure 130 may be ball-shaped, which is not limited thereto (see, e.g., par.0037/ll.30-32). Additionally, Shen teaches the importance of ensuring that Shen’s metal ball/conductive structure has a height sufficient enough to extend beyond the opposite side 128 of Shen’s first chip 120, so as to ensure that the opposite side of Shen’s first chip is covered by an underfill that aids in ensuring the protection and reliability of Shen’s device (see, e.g., pars.0040/ll.14-18, 0041/ll.7-12, and 0047). Shen, however, fails to explicitly specify that Shen’s conductive structure, albeit metal and comprising a single ball, comprises a stack of balls. Kung, in the same field of endeavor and in a similar device to Shen, teaches that having a conductive structure 250 comprising a stack of balls 252/254 allows for adjustment of the conductive structure’s height to a level desired by one of ordinary skill in the art based on the number of balls selected by one skilled in the art (see, e.g., Kung: 0030/ll.5-9). Kung further teaches that such a structure provides advantages, including enhanced miniaturization, reduced production costs, and simplified manufacturing processes, compared to conventional designs comprising only a single ball 142 (see, e.g., Kung: figs. 1-2 and pars.0006 and 0008)
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to modify Shen’s metal ball conductive structure (taught by Shen to be gold or silver; see, e.g., par.0037/ll.26-27) to comprise a stack of balls (again, such that each of the metal balls is gold or silver, as the use of a single metal material of either gold or silver has been taught by Shen to be appropriate for Shen’s conductive structure/metal ball; see, e.g., par.0037/ll.26-27), such that the stack extends from the outer pad beyond the opposite side of Shen’s first chip (as already taught to be beneficial by Shen), as opposed to the single metal ball already shown by Shen, as taught by Kung, so as to facilitate adjustment of the height of Shen’s conductive structure to a desired level (as taught by Shen to be pivotal to aiding the reliability of Shen’s device), while simultaneously enhancing miniaturization, reducing production costs, and simplifying manufacturing processes.
Regarding claim 2, Shen (see, e.g., fig. 1F) shows metal balls 130 (see the comments stated above in paragraph 22-24 regarding the stack of balls, which are considered to be repeated here). Furthermore, Kung (see, e.g., Kung: par.0028) teaches wire bonding to be appropriate for forming balls.
However, the language, term, or phrase “wherein the metal balls are formed by wire bonding”, is directed towards the process of making metal balls. 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 “wherein the metal balls are formed by wire bonding” only requires metal balls, which does not distinguish the invention from Shen/Kung, who teaches the structure as claimed.
Accordingly, it is noted that that Shen/Kung shows all structural aspects of the packaged device according to the claimed invention, and that the method steps of forming the metals balls through wire bonding are intermediate steps that do not affect the structure of the final device.
Regarding claim 5, Shen (see, e.g., fig. 1F and pars.0042/ll.1-3 and 0049) teaches a carrier board having a first side and a second side disposed opposite to each other, wherein the conductive structure 130 is connected to the first side of the carrier board.
Regarding claim 6, Shen (see, e.g., fig. 1F and pars.0042/ll.1-3 and 0049) shows an underfill layer 150 located between the first chip 120, the second chip 110, and the carrier board, and at least surrounding the conductive structure 130/162.
Regarding claim 8, Shen (see, e.g., figs. 1B and 1F and par.0038/ll.1-3) shows that the second chip 110 is larger in size than the first chip 120.
Regarding claim 9, Shen (see, e.g., fig. 1A) shows that the outer pad 118 is formed together with the chip bonding portion 114.
Nevertheless, the language, term, or phrase “wherein the outer pad is formed together with the chip bonding portion”, is directed towards the process of forming an outer pad and a chip bonding portion. 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 “wherein the outer pad is formed together with the chip bonding portion” only requires an outer pad and a chip bonding portion, which does not distinguish the invention from Shen/Kung, who teaches the structure as claimed.
Accordingly, it is noted that that Shen/Kung shows all structural aspects of the packaged device according to the claimed invention, and that the method steps of forming the outer pad together with the chip bonding portion are intermediate steps that do not affect the structure of the final device.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shen/Oh in view of Zhang (US 2022/0077123).
Regarding claim 5, Shen/Oh teaches most aspects of the instant invention (see paragraphs 7-11 and 15 above). Shen further teaches a carrier board having a first side and a second side disposed opposite to each other, wherein the conductive structure is connected to the first side of the carrier board (see paragraph 15 above). Furthermore, Zhang, in the same field of endeavor, teaches a similar device to Shen, having a semiconductor structure possessing a first chip 10, a second chip 20, and a carrier board 30 having a first side and a second side opposite to each other, wherein a conductive structure 202 is connected to the first side of the carrier board (see, e.g., Zhang: fig. 10). Zhang teaches that the attachment of such a carrier board in this orientation can allow chips and their circuitry to be connected to external electronic components capable of supplying power to the chips and carrying electrical connection between electronic components (see, e.g., Zhang: pars.0058/ll.1-3 and 0184/ll.11-16).
Therefore, it further supported that it would have been obvious to one of ordinary skill in the art to have Shen’s semiconductor device comprise a carrier board having a first side and a second side disposed opposite to each other, wherein a conductive structure is connected to the first side of the carrier board, so as to expand the external applications of and the external circuitry and power distribution connecting capabilities of Shen’s chips, as taught by Zhang.
Regarding claim 6, Shen (see, e.g., fig. 1F and par.0049) shows an underfill layer 150 located between the first chip 120, the second chip 110, and the carrier board, and at least surrounding the conductive structure 130 (see also paragraph 16 above). Furthermore, Zhang (see, e.g., Zhang: fig. 10) also shows an underfill layer 40 located between Zhang’s first chip 10, second chip 20, and carrier board 30, and at least surrounding Zhang’s conductive structure 202.
Regarding claim 7, Zhang (see, e.g., Zhang: fig. 10) shows a plurality of conductive terminals 50 disposed on the second side of Zhang’s carrier board 30.
On the other hand, although Shen/Oh and Shen/Oh/Zhang teach most aspects of the instant invention (see paragraphs 7-11, 15-16, and 42-44 above), Shen fails to specify that a plurality of conductive terminals is disposed on the second side of Shen’s carrier board. Zhang teaches that including a plurality of conductive terminals on the second side of a carrier board can allow the coupling of the carrier board to external electronic components capable of supplying power to chips and carrying electrical connection between electronic components (see, e.g., Zhang: pars.0058/ll.1-3, 0094/ll.1-5, and 0184/ll.11-16).
Therefore, it would have been obvious to one of ordinary skill in the art to have Shen’s semiconductor device comprise a plurality of conductive terminals disposed on the second side of Shen’s carrier board, so as to allow the coupling of Shen’s carrier board to external electrical components capable of expanding the external applications of and the external circuitry and power distribution connecting capabilities of Shen’s chips, as taught by Zhang.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shen/Kung in view of Zhang.
Regarding claim 5, Shen/Kung teaches most aspects of the instant invention (see paragraphs 22-24 and 28 above). Shen further teaches a carrier board having a first side and a second side disposed opposite to each other, wherein the conductive structure is connected to the first side of the carrier board (see paragraph 28 above). Furthermore, Zhang, in the same field of endeavor, teaches a similar device to Shen, having a semiconductor structure possessing a first chip 10, a second chip 20, and a carrier board 30 having a first side and a second side opposite to each other, wherein a conductive structure 202 is connected to the first side of the carrier board (see, e.g., Zhang: fig. 10). Zhang teaches that the attachment of such a carrier board in this orientation can allow chips and their circuitry to be connected to external electronic components capable of supplying power to the chips and carrying electrical connection between electronic components (see, e.g., Zhang: pars.0058/ll.1-3 and 0184/ll.11-16).
Therefore, it further supported that it would have been obvious to one of ordinary skill in the art to have Shen’s semiconductor device comprise a carrier board having a first side and a second side disposed opposite to each other, wherein a conductive structure is connected to the first side of the carrier board, so as to expand the external applications of and the external circuitry and power distribution connecting capabilities of Shen’s chips, as taught by Zhang.
Regarding claim 6, Shen (see, e.g., fig. 1F and par.0049) shows an underfill layer 150 located between the first chip 120, the second chip 110, and the carrier board, and at least surrounding the conductive structure 130 (see also paragraph 29 above). Furthermore, Zhang (see, e.g., Zhang: fig. 10) also shows an underfill layer 40 located between Zhang’s first chip 10, second chip 20, and carrier board 30, and at least surrounding Zhang’s conductive structure 202.
Regarding claim 7, Zhang (see, e.g., Zhang: fig. 10) shows a plurality of conductive terminals 50 disposed on the second side of Zhang’s carrier board 30.
On the other hand, although Shen/Kung and Shen/Kung/Zhang teach most aspects of the instant invention (see paragraphs 22-24, 28-29, and 42-44 above), Shen fails to specify that a plurality of conductive terminals is disposed on the second side of Shen’s carrier board. Zhang teaches that including a plurality of conductive terminals on the second side of a carrier board can allow the coupling of the carrier board to external electronic components capable of supplying power to chips and carrying electrical connection between electronic components (see, e.g., Zhang: pars.0058/ll.1-3, 0094/ll.1-5, and 0184/ll.11-16).
Therefore, it would have been obvious to one of ordinary skill in the art to have Shen’s semiconductor device comprise a plurality of conductive terminals disposed on the second side of Shen’s carrier board, so as to allow the coupling of Shen’s carrier board to external electrical components capable of expanding the external applications of and the external circuitry and power distribution connecting capabilities of Shen’s chips, as taught by Zhang.
Response to Arguments
Applicant’s amendments to the drawings and the specification have overcome the objections to the drawings put forth in the previous Office action mailed on 10/23/2025. Accordingly, the objections to the drawings put forth in the previous Office action are withdrawn.
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant’s amendment necessitated the new grounds 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.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shamita Hanumasagar at (703) 756-1521 and between the hours of 7:00 AM to 5:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Shamita.Hanumasagar@uspto.gov. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy, can be reached on (571) 272-1705.
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/Shamita S. Hanumasagar/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814