Attorney Docket Number: Q284044
Filing Date: 05/25/2023
Claimed Priority Date: 09/06/2022 (KR 10-2022-0112601)
Inventor: Kim et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the amendment filed on 01/02/2026.
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 01/02/2026 in reply to the previous Office action mailed on 10/01/2025 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims, and a claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Therefore, the following must be shown or the features canceled from the claims. No new matter should be entered.
“Wherein each of the under bump metallurgy (UBM) structures… comprises first intermetallic compound structure… [and] a second intermetallic compound structure” while “Wherein a side surface of the first UBM layer comprises a shape that is more curved than a shape of a side surface of the second UBM layer”, as recited in claims 17 and 12
“UBM structures disposed” while “wherein each of the UBM structures further comprises a first intermetallic compound structure… [and] a second intermetallic compound structure”, as recited in claims 1 and 10, recited in claim 12 and 17, and recited in claim 18
“UBM structures disposed” while “wherein a side surface of the first UBM layer comprises a shape that is more curved than a shape of a side surface of the second UBM layer”, as recited in claims 1 and 11 and recited in claim 12
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Initial Remarks
Please refer to the attached translations for all non-U.S. paragraph references.
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, 3-7, 10, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2020/0203265) in view of Tsao (US 2019/0164920).
Regarding claim 1, Jung (see, e.g., fig. 5) shows most aspects of the instant invention, including a semiconductor package 100d comprising:
a redistribution structure 130/140 comprising a redistribution layer 140;
a semiconductor chip 110 electrically connected to the redistribution layer (see, e.g., par.0063/ll.1-3);
bumps 160 disposed on the redistribution structure; and
under bump metallurgy (UBM) structures 150 disposed between the bumps and the redistribution structure
wherein:
each of the UBM structures comprises:
a first UBM layer 153 comprising copper or a copper alloy (see, e.g., par.0112/ll.9-10) having a first wettability; and
a second UBM layer 151 disposed between the redistribution structure 130/140 and the first UBM layer and comprising nickel or a nickel alloy (see, e.g., par.0109/ll.7-8), the nickel or nickel alloy having a second wettability; and
an area of a surface of the second UBM layer 151 facing the first UBM layer 153 is greater than an area of a surface of the first UBM layer facing the second UBM layer
It is initially noted that wettability is an inherent property of materials and material interfaces, and therefore by inherent chemical nature will Jung’s copper or copper alloy have a first wettability and Jung’s nickel or nickel alloy have a second wettability. Furthermore, Jung (see, e.g., pars.0013/ll.6-7, 0080/ll.5-6, and 0087) teaches wettability to be an important aspect and property of UBM structures and that Jung’s bumps comprise solder. However, although Jung teaches that Jung’s first and second UBM layers comprise different materials (i.e., copper or copper alloy and nickel or nickel alloy, respectively), and thereby implicitly teaches that Jung’s copper or copper alloy and nickel or nickel alloy have respective first and second wettabilities, Jung fails to explicitly specify that the copper or copper alloy has a first wettability and that the nickel or nickel alloy has a second wettability lower than the first wettability. Tsao, in the same field of endeavor, teaches that when under bump structures comprise copper or copper alloy and nickel or nickel alloy layers of first and second wettabilities such that the nickel or nickel alloy has a lower (second) wettability than the (first wettability of the) copper or copper alloy, flow of bump material (i.e., solder) down the side of the nickel or nickel alloy layer is inhibited, thereby preventing overflow and void formation in the bump bond (i.e., solder bond), which subsequently improves the reliability and scalability of the inclusive device (see, e.g., pars.0027/ll.9-21 and 0070).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Jung’s copper or copper alloy have a first wettability and Jung’s nickel or nickel alloy have a second wettability lower than the first wettability, as taught by Tsao, so as to inhibit flow of Jung’s solder bump material down the side of Jung’s nickel or nickel alloy layer, thereby preventing overflow and void formation in Jung’s bump bond and subsequently improving the reliability and scalability of Jung’s overall device.
Furthermore, the specific claim limitation that the copper or copper alloy has a first wettability and the nickel or nickel alloy has a second wettability lower than the first wettability is a property of the first and second UBM layers of Jung’s device.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant has provided no empirical evidence or data proving that the prior art products do not necessarily possess the characteristics of the claimed product. In the instant case, Jung teaches the same first and second UBM layers comprising the same copper or copper alloy and nickel or nickel alloy materials as recited in the claim, therefore, the layers will have wettability properties also recited in the claim.
Regarding claim 18, Jung (see, e.g., fig. 5) shows most aspects of the instant invention, including a semiconductor package 100d comprising:
a redistribution structure 130/140 comprising a redistribution layer 140;
a semiconductor chip 110 electrically connected to the redistribution layer (see, e.g., par.0063/ll.1-3);
bumps 160 arranged on the redistribution structure; and
under bump metallurgy (UBM) structures 150 disposed between the bumps and the redistribution structure
wherein:
each of the UBM structures comprises:
a first UBM layer 153 comprising a first metal material or an alloy of the first metal material (e.g., copper) (see, e.g., par.0112/ll.9-10), the first metal material or the alloy of the first metal material having a first wettability;
a second UBM layer 151 disposed between the redistribution structure 130/140 and the first UBM layer and comprising a second metal material different from the first metal material or an alloy of the second metal material (e.g., nickel) (see, e.g., par.0109/ll.7-8), the second metal material or the alloy of the second metal material having a second wettability;
a first intermetallic compound structure comprising an intermetallic compound in which at least a portion of a material of the bumps 160 and the first metal material (i.e., the copper first UBM layer 153) are bonded and connected between the bumps and the first UBM layer; and
a second intermetallic compound structure comprising an intermetallic compound in which at least a portion of the material of the bumps 160 and the second metal material (i.e., the nickel second UBM layer 151) are bonded and connected between the bumps and the second UBM layer 151 to surround and seal at least a portion of the first UBM layer 153
Although Jung does not explicitly illustrate the formation of first and second intermetallic compounds in figure 5, Jung details that the reflow process used in the formation of the semiconductor package shown in figure 5 (see, e.g., fig. 7A-7F) will result in the formation of first and second intermetallic compounds at the interfaces where the bumps directly contact the first or second UBM layers (see, e.g., figs. 4H and 19-20 and pars.0124, 0103/ll.7-12, and 0264). Furthermore, Jung details an alternative embodiment the same as that shown in figure 5 (see, e.g., fig. 8 and pars.0133/ll.3-5 0138), except that a diffusion barrier layer is included to prevent excessive generation of an intermetallic compound due to the reaction between the bumps 160 and UBM structures 150, further asserting that an intermetallic compound will result from the formation of the semiconductor package and reaction between the bumps and first and second UBM layers shown in Jung’s figure 5.
As taught by Jung and physically shown in other embodiments (see, e.g., figs. 19-20), the high-temperature reflow process used to create the semiconductor package shown in figure 5 (see, e.g., pars.0128-0129) will result in the diffusion of the preliminary metal layer 161 shown in figures 7E-7F, which in turn results in the metal material of the preliminary metal layer (see, e.g., par.0124) reacting with the metal material of the first UBM layer 153 (e.g., copper), the metal material of the second UBM layer 151 (e.g., nickel), and the metal material of the bumps 160, resulting in the generation of an intermetallic compound at interfaces where either the first UBM layer or the second UBM layer directly contacts the bump, such that the intermetallic compound includes, at varying concentrations, the metal elements present in the first UBM layer, the second UBM layer, and the bumps (see, e.g., figs. 4H and 19-20 and pars.0103/ll.7-12 and 0263-264). That is, the process used to create Jung’s semiconductor package shown in figure 5 inherently creates a first intermetallic compound structure at the interfaces where Jung’s first UBM layer 153 directly contacts Jung’s bump 160 and a second intermetallic compound structure at the interfaces where Jung’s second UBM layer 151 directly contacts Jung’s bump 160.
Therefore, Jung (see, e.g., fig. 5, as well as figs. 19-20 for reference) teaches intermetallic compound structures such that each of the UBM structures comprises:
a first intermetallic compound structure comprising an intermetallic compound in which at least a portion of a material of the bumps 160 and the first metal material (i.e., the copper first UBM layer 153) are bonded and connected between the bumps and the first UBM layer; and
a second intermetallic compound structure comprising an intermetallic compound in which at least a portion of the material of the bumps 160 and the second metal material (i.e., the nickel second UBM layer 151) are bonded and connected between the bumps and the second UBM layer 151 to surround and seal at least a portion of the first UBM layer 153
Additionally, it is initially noted that wettability is an inherent property of materials and material interfaces, and therefore by inherent chemical nature will Jung’s first metal material or alloy of the first metal material have a first wettability and Jung’s second metal material or alloy of the second metal material have a second wettability. Furthermore, Jung (see, e.g., pars.0013/ll.6-7, 0080/ll.5-6, 0087, 0109/ll.7-8, and 0112/ll.9-10) teaches wettability to be an important aspect and property of UBM structures, that Jung’s bumps comprise solder, that the first metal material or alloy of the first metal material comprises copper, and that the second metal material or alloy of the second metal material comprises nickel. However, although Jung teaches that Jung’s first and second UBM layers comprise different metal or metal alloy materials (i.e., copper or copper alloy and nickel or nickel alloy, respectively), and thereby implicitly teaches that first metal material or alloy of the first metal material and second metal material or alloy of the second metal material have respective first and second wettabilities, Jung fails to explicitly specify that the first metal material or alloy of the first metal material has a first wettability and that the second metal material or alloy of the second metal material has a second wettability lower than the first wettability. Tsao, in the same field of endeavor, teaches that when under bump structures comprise layers of a first metal material or alloy of the first metal material and a second metal material or alloy of the second metal material (e.g., copper or copper alloy and nickel or nickel alloy, matching Jung’s first and second UBM layers) of first and second wettabilities such that the second metal material or alloy of the second metal material has a lower (second) wettability than the (first wettability of the) first metal material or alloy of the first metal material, flow of bump material (i.e., solder) down the side of the second metal material or alloy of the second metal material layer is inhibited, thereby preventing overflow and void formation in the bump bond (i.e., solder bond), which subsequently improves the reliability and scalability of the inclusive device (see, e.g., pars.0027/ll.9-21 and 0070).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Jung’s first metal material or alloy of the first metal material have a first wettability and Jung’s second metal material or alloy of the second metal material have a second wettability lower than the first wettability, as taught by Tsao, so as to inhibit flow of Jung’s solder bump material down the side of Jung’s second metal material or alloy of the second metal material layer, thereby preventing overflow and void formation in Jung’s bump bond and subsequently improving the reliability and scalability of Jung’s overall device.
Furthermore, the specific claim limitation that the first metal material or alloy of the first metal material has a first wettability and the second metal material or alloy of the second metal material has a second wettability lower than the first wettability is a property of the first and second UBM layers of Jung’s device.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant has provided no empirical evidence or data proving that the prior art products do not necessarily possess the characteristics of the claimed product. In the instant case, Jung teaches the same first and second UBM layers comprising the same first metal material or alloy of the first metal material and second metal material or alloy of the second metal material materials as recited in the claim, therefore, the layers will have wettability properties also recited in the claim.
Regarding claim 3, Jung (see, e.g., fig. 5) shows that on the surface of the second UBM layer 151 facing the first UBM layer 153, a region not overlapping the first UBM layer surrounds a region overlapping the first UBM layer.
Regarding claim 4, Jung (see, e.g., fig. 5) shows wherein that:
the redistribution structure 130/140 further comprises a first insulating layer 133 surrounding a first portion of each of the UBM structures 150; and wherein
a portion of the first insulating layer is between a second portion of each of the UBM structures and a portion of the redistribution layer 140
Regarding claim 5, Jung (see, e.g., fig. 5) shows that the redistribution structure 130/140 further comprises a second insulating layer 131 between the redistribution layer 140 and the semiconductor chip 110.
Regarding claim 6, Jung (see, e.g., fig. 5) shows that the semiconductor chip 110 is on the redistribution structure 130/140.
Regarding claim 7, Jung (see, e.g., fig. 5 and pars.0176-0177 and 0265/ll.4-6) shows that a thickness of the first UBM layer 153 is greater than a thickness of the second UBM layer 151.
Regarding claim 8, Jung (see, e.g., par.0067/ll.6-10) shows that a total thickness of the first UBM layer 153 and the second UBM layer 151 is 1 µm or more and 50 µm or less (e.g., 30 µm).
Nevertheless, differences in thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality (see next paragraph below) of the claimed thickness, i.e., 1 µm or more and 50 µm or less, it would have been obvious to one of ordinary skill in the art to use these values in the device of Jung.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed thickness or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 10, although Jung does not explicitly illustrate the formation of first and second intermetallic compounds in figure 5, Jung details that the reflow process used in the formation of the semiconductor package shown in figure 5 (see, e.g., fig. 7A-7F) will result in the formation of first and second intermetallic compounds at the interfaces where the bumps directly contact the first or second UBM layers (see, e.g., figs. 4H and 19-20 and pars.0124, 0103/ll.7-12, and 0264). Furthermore, Jung details an alternative embodiment the same as that shown in figure 5 (see, e.g., fig. 8 and pars.0133/ll.3-5 0138), except that a diffusion barrier layer is included to prevent excessive generation of an intermetallic compound due to the reaction between the bumps 160 and UBM structures 150, further asserting that an intermetallic compound will result from the formation of the semiconductor package and reaction between the bumps and first and second UBM layers shown in figure 5.
As taught by Jung and physically shown in other embodiments (see, e.g., figs. 19-20), the high-temperature reflow process used to create the semiconductor package shown in figure 5 (see, e.g., pars.0128-0129) will result in the diffusion of the preliminary metal layer 161 shown in figures 7E-7F, which in turn results in the metal material of the preliminary metal layer (see, e.g., par.0124) reacting with the metal material of the first UBM layer 153 (i.e., copper), the metal material of the second UBM layer 151 (i.e., nickel), and the metal material of the bumps 160, resulting in the generation of an intermetallic compound at interfaces where either the first UBM layer or the second UBM layer directly contacts the bump, such that the intermetallic compound includes, at varying concentrations, the metal elements present in the first UBM layer, the second UBM layer, and the bumps (see, e.g., figs. 4H and 19-20 and pars.0103/ll.7-12 and 0263-264). That is, the process used to create Jung’s semiconductor package shown in figure 5 inherently creates a first intermetallic compound structure at the interfaces where Jung’s first UBM layer (i.e., copper) 153 directly contacts Jung’s bump 160 and a second intermetallic compound structure at the interfaces where Jung’s second UBM layer 151 (i.e., nickel) directly contacts Jung’s bump 160.
Therefore, Jung (see, e.g., fig. 5, as well as figs. 19-20 for reference) teaches wherein that each of the UBM structures 150 further comprises:
a first intermetallic compound structure comprising an intermetallic compound in which copper (i.e., the first UBM layer) is bonded to at least a portion of a material of the bumps 160 and connected between the bumps and the first UBM layer 153; and
a second intermetallic compound structure comprising an intermetallic compound in which at least a portion of the material of the bumps 160 and nickel (i.e., the second UBM layer) are bonded and connected between the bumps and the second UBM layer 151 to enclose and seal at least a portion of the first UBM layer 153
Regarding claim 19, Jung (see, e.g., fig. 5) shows that an area of a surface of the second UBM layer 151 facing the first UBM layer 153 is greater than an area of a surface of the first UBM layer facing the second UBM layer.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 20090089578 A) in view of Jeong (US 2019/0131225), Mikagi (US 2003/0025202), Higdon (US 6,375,062), and Tsao.
Regarding claim 1, Lee (see, e.g., fig. 1) shows most aspects of the instant invention, including a semiconductor package 100 comprising:
a redistribution structure 150/140 comprising a redistribution layer 140;
a semiconductor chip 110 electrically connected to the redistribution layer (see, e.g., Lee (Patent Application (TRANSLATED): par.0031/ll.1-2));
a bump 180 disposed on the redistribution structure; and
an under bump metallurgy (UBM) structure 170/160 disposed between the bump and the redistribution structure
wherein:
the UBM structure comprises:
a first UBM layer 170 comprising copper or a copper alloy, the copper or the copper alloy having a first wettability (see, e.g., Lee (Patent Application (TRANSLATED): par.0042/ll.6-7));
a second UBM 160 layer disposed between the redistribution structure 150/140 and the first UBM layer and comprising a metal material (see, e.g., Lee (Patent Application (TRANSLATED): par.0055/ll.5)), the metal material having a second wettability; and
an area of a surface of the second UBM layer 160 facing the first UBM layer 170 is greater than an area of a surface of the first UBM layer facing the second UBM layer
Although Lee shows most aspects of the instant invention, further states that the second UBM layer may comprise an equivalent to copper, and teaches that Lee’s bump comprises solder (see, e.g., par.0008), Lee fails to specify Lee’s device includes multiple bumps and UBM structures and that Lee’s second UBM layer comprises nickel or nickel alloy. Jeong, in the same field of endeavor, teaches that the number of bumps (and subsequent UBM structures) in a device may be sufficiently selected by a person skilled in the art depending on design particulars, and further teaches that when a device comprises multiple bumps (each having their own UBM structure), the bumps may be arranged so as to form a package structure that can implement a plurality of input/output terminals while facilitating 3D interconnection (see, e.g., Jeong: par.0054). Furthermore, Jeong teaches nickel and copper to be equivalents for their use as second UBM layer materials (see, Jeong: fig. 3 and par.0051/ll.1-6). Additionally, Mikagi, in the same field of endeavor, specifically teaches that nickel- or nickel-alloy-comprising UBM layers may act as barrier layers against diffusion and can be structured so as to lower the possibility of crack generation or peel-off of underlying conductive or dielectric layers (see, e.g., Mikagi: par.0051/ll.1-3 and 0052). Moreover, Higdon, in the same field of endeavor, also teaches that nickel- or nickel-alloy-comprising UBM layers inhibit unwanted diffusion, wherein Higdon also teaches that such a layer may serve as a wettable layer if an overlaying copper layer is dissolved into overlaying solder (see, e.g., Higdon: col.2/ll.2-8).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Lee’s semiconductor package comprise multiple similar bumps and UBM structures, as taught by Jeong, so as to allow the construction of a package structure according to design particulars desired by a person skilled in the art, such as a package structure that can implement a plurality of input/output terminals while facilitating 3D interconnection. Furthermore, it would have been obvious at the time of filing the invention to use either copper or nickel in Lee’s second UBM layer because these were recognized in the semiconductor art as equivalents for their use as second UBM layer materials, and selecting among known equivalents would be within the level of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S, 82 USPQ2d 1385 (2007). Additionally, Mikagi and Higdon are evidence that at the time of filing the invention it would have been obvious that one of ordinary skill in the art would have particular incentive to have Lee’s second UBM layer comprise nickel or nickel alloy, as taught by Mikagi and Higdon, so as to allow Lee’s second UBM layer to act as a barrier against unwanted diffusion, while simultaneously comprising a material permitting structural arrangement so as to lower the possibility of crack generation or peel-off of Lee’s underlying conductive or dielectric layers while permitting action as a wettable layer in case of dissolution of Lee’s first UBM copper- or copper-comprising-alloy.
Additionally, it is initially noted that wettability is an inherent property of materials and material interfaces, and therefore by inherent chemical nature will Lee/Jeong/Mikagi/Higdon’s copper or copper alloy have a first wettability and Lee/Jeong/Mikagi/Higdon’s nickel or nickel alloy have a second wettability (see the comments stated above in paragraphs 37-39 regarding the nickel or nickel alloy material, which are considered to be repeated here). However, although Lee/Jeong/Mikagi/Higdon teaches that Lee/Jeong/Mikagi/Higdon’s first and second UBM layers comprise different materials (i.e., copper or copper alloy and nickel or nickel alloy, respectively), and thereby implicitly teaches that Lee/Jeong/Mikagi/Higdon’s copper or copper alloy and nickel or nickel alloy have respective first and second wettabilities, Lee/Jeong/Mikagi/Higdon fails to explicitly specify that the copper or copper alloy has a first wettability and that the nickel or nickel alloy has a second wettability lower than the first wettability. Tsao, in the same field of endeavor, teaches that when under bump structures comprise copper or copper alloy and nickel or nickel alloy layers of first and second wettabilities such that the nickel or nickel alloy has a (second) lower wettability than the (first wettability of the) copper or copper alloy, flow of bump material (i.e., solder) down the side of the nickel or nickel alloy layer is inhibited, thereby preventing overflow and void formation in the bump bond (i.e., solder bond), which subsequently improves the reliability and scalability of the inclusive device (see, e.g., pars.0027/ll.9-21 and 0070).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Lee/Jeong/Mikagi/Higdon’s copper or copper alloy have a first wettability and Lee/Jeong/Mikagi/Higdon’s nickel or nickel alloy have a second wettability lower than the first wettability, as taught by Tsao, so as to inhibit flow of Lee/Jeong/Mikagi/Higdon’s solder bump material down the side of Lee/Jeong/Mikagi/Higdon’s nickel or nickel alloy layer, thereby preventing overflow and void formation in Lee/Jeong/Mikagi/Higdon’s bump bond and subsequently improving the reliability and scalability of Lee/Jeong/Mikagi/Higdon’s overall device.
Furthermore, the specific claim limitation that the first metal material or alloy of the first metal material has a first wettability and the second metal material or alloy of the second metal material has a second wettability lower than the first wettability is a property of the first and second UBM layers of Lee/Jeong/Mikagi/Higdon’s device.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant has provided no empirical evidence or data proving that the prior art products do not necessarily possess the characteristics of the claimed product. In the instant case, Lee/Jeong/Mikagi/Higdon teaches the same first and second UBM layers comprising the same copper or copper alloy and nickel or nickel alloy materials as recited in the claim, therefore, the layers will have wettability properties also recited in the claim.
Regarding claim 9, Lee (see, e.g., figs. 1-2) shows that a portion of the surface of the second UBM layer 160 is exposed to air.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jung/Tsao in view of Higuchi (JP 2005268442 A).
Regarding claim 2, Jung/Tsao shows most aspects of the instant invention (see paragraphs 8-13 above). Furthermore, Jung teaches that Jung’s second UBM layer 151 may be multi-layered, having the lowest layer comprise a metal material different from copper and nickel (e.g., titanium) having an excellent adhesive characteristic with respect to Jung’s insulating pattern 133 (see, e.g., par.0070). However, Jung fails to specify that each of the UBM structures further comprises a seed metal layer comprising a seed material different from copper and different from nickel between the redistribution structure and the second UBM layer, and contacting the second UBM layer, wherein an area of a surface of the seed metal layer facing the second UBM layer is greater than an area of the surface of the first UBM layer facing the second UBM layer.
Higuchi, in the same field of endeavor, teaches a device having a first UBM layer 9, a second UBM layer 7, and a seed metal layer 6, wherein the seed metal layer is disposed between a connecting layer 4 and the second UBM layer (while contacting the second UBM layer) and comprises a seed material different from copper and different from nickel (e.g., titanium) (see, e.g., Higuchi fig. 1 and (Description - Translated): par.0032/ll.5-6). Higuchi teaches that the presence of such a seed metal layer enhances the adhesion between a second UBM layer, a surrounding insulating layer, and a connecting layer (see, e.g., Higuchi (Description - Translated): par.0044/ll.1-2). Furthermore, Higuchi teaches that when an area of a surface of such a seed metal layer facing a second UBM layer is greater than the area of the surface of the first UBM layer facing the second UBM layer, stress concentrated on an end portion of the first UBM layer hardly applies to an end portion of the second UBM layer and the seed metal layer, thereby preventing peeling of the second UBM layer and seed metal layer and improving the reliability of the device (see, e.g., Higuchi (Description - Translated): par.0037/ll.7-14 and 0038).
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 Jung’s UBM structures further comprise a seed metal layer comprising a seed material different from copper and different from nickel between Jung’s redistribution structure and Jung’s second UBM layer and contacting Jung’s second UBM layer, as taught by Higuchi, so as to improve the adhesion between Jung’s second UBM layer, Jung’s surrounding insulating layer, and Jung’s redistribution layer. Furthermore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have an area of a surface of the seed metal layer facing the second UBM layer be greater than the area of the surface of the first UBM layer facing the second UBM layer, as taught by Higuchi, so as allow stress concentrated on an end portion of the first UBM layer to hardly apply to an end portion of the second UBM layer and the seed metal layer, thereby preventing peeling of Jung’s second UBM layer and seed metal layer and improving the reliability of Jung’s device.
Claims 11-13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jung in view of Tsao and Jang (US 2020/0161261).
Regarding claim 12, Jung shows most aspects of the instant invention, including a semiconductor package 100d comprising:
a redistribution structure 130/140 comprising a redistribution layer 140;
a semiconductor chip 110 electrically connected to the redistribution layer (see, e.g., par.0063/ll.1-3);
bumps 160 disposed on the redistribution structure; and
under bump metallurgy (UBM) structures 150 disposed between the bumps and the redistribution structure
wherein:
each of the UBM structures comprises:
a first UBM layer 153 comprising a first metal material or an alloy of the first metal material (e.g., copper) (see, e.g., par.0112/ll.9-10), the first metal material or the alloy of the first metal material having a first wettability; and
a second UBM layer 151 disposed between the redistribution structure 130/140 and the first UBM layer and comprising a second metal material different from the first metal material or an alloy of the second metal material (e.g., nickel) (see, e.g., par.0109/ll.7-8), the second metal material or the alloy of the second metal material having a second wettability; and
Although Jung shows most aspects of the instant invention, Jung (see, e.g., fig. 5) fails to specify that a side surface of Jung’s first UBM layer comprises a shape that is more curved than a shape of a side surface of Jung’s second UBM layer. Jung shows instead (see, e.g., fig. 5) that the side surfaces of both Jung’s first UBM layer 153 and second UBM layer 151 are straight. However, it is noted that the specification fails to provide teachings about the criticality of having a relatively curved side surface, as claimed in the instant application.
Therefore, absent any criticality, this limitation is only considered to be an obvious modification of the side surface shape disclosed by Jung 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 side surface shape claimed by applicant is nothing more than one of numerous side surface shapes 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 side surface shape is known in the art. Jang, in the same field of endeavor, teaches forming a curved side surface S4 for a UBM layer 160 most directly contacting a bump 170 (see, e.g., Jang: fig. 7). Jang teaches that such a curved surface allows the area of the bump formed on the outer sides of the UBM layer to be increased, which better propagates potential cracks in the bump that form along the surface of such a UBM layer when stress is applied the device, which can improve the reliability degradation of the device (see, e.g., Jang: fig. 7 and pars.0032/ll.11-15, 0033/ll.8-9, and 0039/ll.1-4).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the curved side surface in the structure of Jung, because curved side surfaces are known in the semiconductor art for their use suitable structures for functional UBM layers, as suggested by Jang, 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). Furthermore, it would have been obvious at the time of filing the invention that one of ordinary skill in the art would find particular incentive to have Jung’s first UBM layer be curved, thereby comprising a shape that is more curved than a shape of a side surface of Jung’s second UBM layer, so as to better disperse stress and propagate potential cracks that form in Jung’s bump along Jung’s first UBM layer, so as to improve the reliability degradation of Jung’s device.
Additionally, it is initially noted that wettability is an inherent property of materials and material interfaces, and therefore by inherent chemical nature will Jung’s first metal material or alloy of the first metal material have a first wettability and Jung’s second metal material or alloy of the second metal material have a second wettability. Furthermore, Jung (see, e.g., pars.0013/ll.6-7, 0080/ll.5-6, 0087, 0109/ll.7-8, and 0112/ll.9-10) teaches wettability to be an important aspect and property of UBM structures, that Jung’s bumps comprise solder, that the first metal material or alloy of the first metal material comprises copper, and that the second metal material or alloy of the second metal material comprises nickel. However, although Jung teaches that Jung’s first and second UBM layers comprise different metal or metal alloy materials (i.e., copper or copper alloy and nickel or nickel alloy, respectively), and thereby implicitly teaches that first metal material or alloy of the first metal material and second metal material or alloy of the second metal material have respective first and second wettabilities, Jung fails to explicitly specify that the first metal material or alloy of the first metal material has a first wettability and that the second metal material or alloy of the second metal material has a second wettability lower than the first wettability. Tsao, in the same field of endeavor, teaches that when under bump structures comprise layers of a first metal material or alloy of the first metal material and a second metal material or alloy of the second metal material (e.g., copper or copper alloy and nickel or nickel alloy) of first and second wettabilities such that the second metal material or alloy of the second metal material has a lower (second) wettability than the (first wettability of the) first metal material or alloy of the first metal material, flow of bump material (i.e., solder) down the side of the second metal material or alloy of the second metal material layer is inhibited, thereby preventing overflow and void formation in the bump bond (i.e., solder bond), which subsequently improves the reliability and scalability of the inclusive device (see, e.g., pars.0027/ll.9-21 and 0070).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Jung’s first metal material or alloy of the first metal material have a first wettability and Jung’s second metal material or alloy of the second metal material have a second wettability lower than the first wettability, as taught by Tsao, so as to inhibit flow of Jung’s solder bump material down the side of Jung’s second metal material or alloy of the second metal material layer, thereby preventing overflow and void formation in Jung’s bump bond and subsequently improving the reliability and scalability of Jung’s overall device.
Furthermore, the specific claim limitation that the first metal material or alloy of the first metal material has a first wettability and the second metal material or alloy of the second metal material has a second wettability lower than the first wettability is a property of the first and second UBM layers of Jung’s device.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant has provided no empirical evidence or data proving that the prior art products do not necessarily possess the characteristics of the claimed product. In the instant case, Jung teaches the same first and second UBM layers comprising the same first metal material or alloy of the first metal material and second metal material or alloy of the second metal material materials as recited in the claim, therefore, the layers will have wettability properties also recited in the claim.
Regarding claim 13, Jung (see, e.g., fig. 5) shows that an area of a surface of the second UBM layer 151 facing the first UBM layer 153 is greater than an area of a surface of the first UBM layer facing the second UBM layer.
Regarding claims 11 and 20, Jung/Tsao shows most aspects of the instant invention (see paragraphs 8-22 above). Furthermore, although Jung shows most aspects of the instant invention, Jung (see, e.g., fig. 5) fails to specify that a side surface of Jung’s first UBM layer comprises a shape that is more curved than a shape of a side surface of Jung’s second UBM layer. Jung shows instead (see, e.g., fig. 5) that the side surfaces of both Jung’s first UBM layer 153 and second UBM layer 151 are straight. However, it is noted that the specification fails to provide teachings about the criticality of having a relatively curved side surface, as claimed in the instant application.
Therefore, absent any criticality, this limitation is only considered to be an obvious modification of the side surface shape disclosed by Jung 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 side surface shape claimed by applicant is nothing more than one of numerous side surface shapes 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 side surface shape is known in the art. Jang, in the same field of endeavor, teaches forming a curved side surface S4 for a UBM layer 160 most directly contacting a bump 170 (see, e.g., Jang: fig. 7). Jang teaches that such a curved surface allows the area of the bump formed on the outer sides of the UBM layer to be increased, which better propagates potential cracks in the bump that form along the surface of such a UBM layer when stress is applied the device, which can improve the reliability degradation of the device (see, e.g., Jang: fig. 7 and pars.0032/ll.11-15, 0033/ll.8-9, and 0039/ll.1-4).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the curved side surface in the structure of Jung, because curved side surfaces are known in the semiconductor art for their use suitable structures for functional UBM layers, as suggested by Jang, 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). Furthermore, it would have been obvious at the time of filing the invention that one of ordinary skill in the art would find particular incentive to have Jung’s first UBM layer be curved, thereby comprising a shape that is more curved than a shape of a side surface of Jung’s second UBM layer, so as to better disperse stress and propagate potential cracks that form in Jung’s bump along Jung’s first UBM layer, so as to improve the reliability degradation of Jung’s device.
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Jung/Tsao/Jang in view of Higuchi.
Regarding claim 14, Jung/Tsao/Jang shows most aspects of the instant invention (see paragraphs 51-60 above). Furthermore, Jung teaches that Jung’s second UBM layer 151 may be multi-layered, having the lowest layer comprise a metal material different from copper and nickel (e.g., titanium) having an excellent adhesive characteristic with respect to Jung’s insulating pattern 133 (see, e.g., par.0070). However, Jung fails to specify that each of the UBM structures further comprises a seed metal layer comprising a seed material different from copper and different from nickel between the redistribution structure and the second UBM layer, and contacting the second UBM layer, wherein an area of a surface of the seed metal layer facing the second UBM layer is greater than an area of the surface of the first UBM layer facing the second UBM layer.
Higuchi, in the same field of endeavor, teaches a device having a first UBM layer 9, a second UBM layer 7, and a seed metal layer 6, wherein the seed metal layer is disposed between a connecting layer 4 and the second UBM layer (while contacting the second UBM layer) and comprises a seed material different from copper and different from nickel (e.g., titanium) (see, e.g., Higuchi fig. 1 and (Description - Translated): par.0032/ll.5-6). Higuchi teaches that the presence of such a seed metal layer enhances the adhesion between a second UBM layer, a surrounding insulating layer, and a connecting layer (see, e.g., Higuchi (Description - Translated): par.0044/ll.1-2). Furthermore, Higuchi teaches that when an area of a surface of such a seed metal layer facing a second UBM layer is greater than the area of the surface of the first UBM layer facing the second UBM layer, stress concentrated on an end portion of the first UBM layer hardly applies to an end portion of the second UBM layer and the seed metal layer, thereby preventing peeling of the second UBM layer and seed metal layer and improving the reliability of the device (see, e.g., Higuchi (Description - Translated): par.0037/ll.7-14 and 0038).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have Jung’s UBM structures comprise a seed metal layer comprising a seed material different from copper and different from nickel between Jung’s redistribution structure and Jung’s second UBM layer and contacting Jung’s second UBM layer, as taught by Higuchi, so as to improve the adhesion between Jung’s second UBM layer, Jung’s surrounding insulating layer, and Jung’s redistribution layer. Furthermore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have an area of a surface of the seed metal layer facing the second UBM layer be greater than the area of the surface of the first UBM layer facing the second UBM layer, as taught by Higuchi, so as allow stress concentrated on an end portion of the first UBM layer to hardly apply to an end portion of the second UBM layer and the seed metal layer, thereby preventing peeling of Jung’s second UBM layer and seed metal layer and improving the reliability of Jung’s device.
Regarding claim 15, Jung (see, e.g., pars.0112/ll.9-10 and 0109/ll.7-8) shows that the first metal material comprises copper and the second metal material comprises nickel.
Regarding claim 16, Jung (see, e.g., fig. 5 and pars. par.0067/ll.6-10, 0176-0177, and 0265/ll.4-6) shows that a thickness of the first UBM layer 153 is greater than thickness of the second UBM layer 151 and that a total thickness of the first UBM layer and the second UBM layer is 1 µm or more and 50 µm or less (e.g., 30 µm).
Nevertheless, differences in thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. Since the applicant has not established the criticality of the claimed thickness, i.e., 1 µm or more and 50 µm or less, it would have been obvious to one of ordinary skill in the art to use these values in the device of Jung. See the comments stated above in paragraphs 28-31 with respect to claim 8 regarding criticality, which are considered to be repeated here.
Regarding claim 17, although Jung does not explicitly illustrate the formation of first and second intermetallic compounds in figure 5, Jung details that the reflow process used in the formation of the semiconductor package shown in figure 5 (see, e.g., fig. 7A-7F) will result in the formation of first and second intermetallic compounds at the interfaces where the bumps directly contact the first or second UBM layers (see, e.g., figs. 4H and 19-20 and pars.0124, 0103/ll.7-12, and 0264). Furthermore, Jung details an alternative embodiment the same as that shown in figure 5 (see, e.g., fig. 8 and pars.0133/ll.3-5 0138), except that a diffusion barrier layer is included to prevent excessive generation of an intermetallic compound due to the reaction between the bumps 160 and UBM structures 150, further asserting that an intermetallic compound will result from the formation of the semiconductor package and reaction between the bumps and first and second UBM layers shown in figure 5.
As taught by Jung and physically shown in other embodiments (see, e.g., figs. 19-20), the high-temperature reflow process used to create the semiconductor package shown in figure 5 (see, e.g., pars.0128-0129) will result in the diffusion of the preliminary metal layer 161 shown in figures 7E-7F, which in turn results in the metal material of the preliminary metal layer (see, e.g., par.0124) reacting with the metal material of the first UBM layer 153 (i.e., copper), the metal material of the second UBM layer 151 (i.e., nickel), and the metal material of the bumps 160, resulting in the generation of an intermetallic compound at interfaces where either the first UBM layer or the second UBM layer directly contacts the bump, such that the intermetallic compound includes, at varying concentrations, the metal elements present in the first UBM layer, the second UBM layer, and the bumps (see, e.g., figs. 4H and 19-20 and pars.0103/ll.7-12 and 0263-264). That is, the process used to create Jung’s semiconductor package shown in figure 5 inherently creates a first intermetallic compound structure at the interfaces where Jung’s first UBM layer (i.e., copper) 153 directly contacts Jung’s bump 160 and a second intermetallic compound structure at the interfaces where Jung’s second UBM layer 151 (i.e., nickel) directly contacts Jung’s bump 160.
Therefore, Jung (see, e.g., fig. 5, as well as figs. 19-20 for reference) teaches wherein that each of the UBM structures 150 further comprises:
a first intermetallic compound structure comprising an intermetallic compound in which copper (i.e., the first UBM layer) is bonded to at least a portion of a material of the bumps 160 and connected between the bumps and the first UBM layer; and
a second intermetallic compound structure comprising an intermetallic compound in which at least a portion of the material of the bumps 160 and nickel (i.e., the second UBM layer) are bonded and connected between the bumps and the second UBM layer 151 to enclose and seal at least a portion of the first UBM layer 153
Response to Arguments
Applicant’s amendments to the drawings and specification as filed on 01/02/2026 have overcome some of the objections to the drawings put forth in the previous Office action mailed on 10/01/2025. Accordingly, those corresponding objections to the drawings from the previous Office action are hereby withdrawn. However, Applicant’s amendments have failed to address some of the remaining objections to the drawings put forth in the previous Office action. Accordingly, the relevant corresponding objections to the drawings from the previous Office action are maintained and are restated in this current Office action.
With regards to the claims, Applicant argues:
As detailed above, Jang only shows a single UBM layer 160. In contrast, claim 12 recites two UBM layers, including a first UBM layer having a side surface whose curvature is defined relative to a side surface of a second UBM layer. Thus, because Jang fails to disclose both a first UBM layer and a second UBM layer, Jang cannot possibly teach or suggest the recited UBM structure “wherein a side surface of the first UBM layer comprises a shape that is more curved than a shape of a side surface of the second UBM layer”. Accordingly, Jang's solitary UBM layer 160 and its curved surface S4 do nothing to cure Jung's demonstrated failure to teach a first UBM layer comprising a side surface that is more curved than a side surface of a second UBM layer, if only because Jang’s single UBM layer cannot practically teach a structural configuration that is defined by a comparative relationship between two UBM layers.
The Examiner responds:
Applicant’s arguments are found unpersuasive because they are based on a mischaracterization of the rejection. The Examiner does not rely on Jang to teach two UBM layers. Jung (see, e.g., fig. 5) already shows this feature, and further shows that the side surfaces of both Jung’s first and second UBM layers are flat. The Examiner instead relies on Jang to support that Jung’s first UBM layer may be curved, which would inherently and naturally ensure that Jung’s first UBM layer has the “relative” curved quality asserted by Applicant. As evinced in the previous Office action mailed on 10/01/2025, Jang, in the same field of endeavor as Jung, teaches forming a curved side surface S4 for a UBM layer 160 most directly contacting a bump 170 (see, e.g., Jang: fig. 7), wherein Jang teaches that such a curved surface allows the area of the bump formed on the outer sides of the UBM layer to be increased, which better propagates potential cracks in the bump that form along the surface of such a UBM layer when stress is applied the device, which can improve the reliability degradation of the device (see, e.g., Jang: fig. 7 and pars.0032/ll.11-15, 0033/ll.8-9, and 0039/ll.1-4). Accordingly, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have the side surfaces Jung’s first UBM layer be curved, thereby comprising a shape that is more curved than a shape of a side surface of Jung’s second UBM layer, so as to better disperse stress and propagate potential cracks that form in Jung’s bump along Jung’s first UBM layer, so as to improve the reliability degradation of Jung’s device. As the side surfaces of Jung’s second UBM layer are already shown by Jung to be flat, curving a side surface of Jung’s first UBM layer would naturally and inherently result in the “relative” curved side surface of the first UBM layer asserted by Applicant.
Applicant has provided no evidence, data, or suggestion proving that curving the first UBM layer of Jung would not result in the relative “curved” side surface claimed by Applicant. Accordingly, Applicant’s arguments are not found persuasive and the rejection rationale is maintained.
With regards to the claims, Applicant argues:
It is well-settled that "[e]vidence of unobvious or unexpected advantageous properties, such as superiority in a property the claimed compound shares with the prior art, can rebut prima facie obviousness [emphasis added]." See MPEP § 716.02(a). In the instant case, the present Application and citations from paragraphs 26, 27, and 30 of the present Application’s specification demonstrate that the recited combination of features (1) a first UBM layer of Cu/Cu alloy, (2) a second UBM layer of Ni/Ni alloy, and (3) wherein the second UBM layer is exposed to an external environment exhibits superior properties compared to the cited art, such that a determination of obviousness based solely on legal precedent would be improper.
The Examiner responds:
Applicant’s arguments are moot in view of the new grounds of rejection. Nevertheless, Applicant’s arguments fail to account that MPEP § 716 first and foremost prefaces that “any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986)”. To be of probative value, the paragraphs cited from the specification must describe actual proof. An alleged improved operation of the resultant device is not actual proof. The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP § 716.02(b)(I). The paragraphs of the specification quoted by the applicant fail to present any data or evidence showing that a nickel or nickel alloy UBM layer produces unexpected results compared to other materials or the prior art, i.e., results that differ in kind rather than degree. Due to the absence of said data, the Examiner concludes that the inventors’ assertions that the claimed materials are critical constitutes mere argument. Accordingly, Applicant’s arguments are not found persuasive and the rejection rationale is maintained.
Applicant’s other 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