DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 7, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 5, the application does not disclose an embodiment with a groove portion on an outer peripheral side of the wall portion (claim 5) and each projection portion projecting inward from an inner peripheral portion of the frame. The limitation of claim 1, as amended, is shown in Fig. 5.
Regarding claim 7, the claim includes that the plurality of projection portions is arranged on an outer peripheral side of four corner portions of the wall portion, which is a mutually exclusive embodiment from claim 1. An embodiment in which both amended claim 1 and this limitation are a part of a single embodiment is not disclosed. The limitation of claim 7 is shown in Fig. 7. There is no embodiment which satisfies both limitations of claim 7 and claim 1, so this is new matter.
Claim 12 also describes the embodiment of Fig. 7, which conflicts with Fig. 5. There is no embodiments that satisfy both mutually exclusive limitations of claim 12 and claim 1. Therefore, it is “new matter”
Claims 5, 7, and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 5, the groove portion on an outer peripheral side of the wall portion is disclosed in Fig. 7 of the instant Application, which is a mutually exclusive with the Species of Fig. 5 claimed in Claim 1, because when the groove portion [24] is on an outer peripheral side of the wall portion [20], so is the projection portion [22].
Regarding claim 7, the limitation of claim 7, shown in Fig. 7, is mutually exclusive with the embodiment of Fig. 5 claimed in amended claim 1.
Regarding claim 12, the claim is also directed toward the Species shown in Fig. 7, mutually exclusive with amended claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 19-20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Emadi et. al., U.S. Pat. Pub. 2020/0373340, hereafter Emadi
Regarding claim 1, Emadi discloses (Figs 5A-5C) a semiconductor device, comprising: a substrate [130];
a frame [160] having a wall portion (inner wall) that is annularly arranged on the substrate and having a plurality of projection portions [161] on an upper surface, wherein each projection portion [161] in the plurality of projection portions projects inward (see Figs 5A, 5B) from an inner peripheral portion of the frame [160], and wherein each projection portion [161] of the plurality of projection portions includes a groove portion (a groove on the bottom side of hook-like projection portion [161] );
a semiconductor chip [123] arranged in a region surrounded by the wall portion [160] on the substrate [130]; and
a lid portion [170] arranged on the upper surface of the wall portion [160 and sealing the semiconductor chip [123].
Regarding claim 2, Emadi further discloses (Fig. 5A) wherein the semiconductor chip [123] has at least one terminal [126], the substrate has at least one first pad [145] and a wiring portion [150], connected to the first pad [145], and the semiconductor device further includes a wire [140] configured to electrically connect the terminal and the first pad (see Figs. 5A, 5B).
Regarding claim 3, Emadi further discloses (Fig. 5B) further comprising a second pad [155] arranged on a lower surface of the substrate [130] and electrically connected to the wiring portion [150].
Regarding claim 4, Emadi further discloses (Figs 4, 5A-5C) wherein the wall portion [160] has a substantially rectangular shape in plan view from an upper surface side, and the plurality of projection portions [161] is separately arranged on an inner peripheral side of two opposing sides of the wall portion (see Fig. 5A).
Regarding claim 19, Emadi further discloses (Figs 4, 5A-5C) wherein a surface of the lid portion [170] facing the substrate [130] is planar.
Regarding claim 20, Emadi further discloses (Figs 5B-5C) wherein the planar surface of the lid portion [170] extends over the plurality of projection portions [161].
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.
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.
Claims 1, 6, 11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et. al., U.S. Pat. 6,509,636, hereafter Tsai, in view of FuKamura et. al., U.S. Pat. 6,627,872, hereafter FuKamura.
Regarding claim 1, Tsai discloses (Figs 2,6,) a semiconductor device, comprising:
a substrate [20];
a frame [22] having a wall portion [22] that is annularly (Col. 3, lines 41-42) arranged on the substrate [20] and having a plurality of projection portions [222]( Col. 3, lines 57-60) on an upper surface, wherein each projection portion of the plurality of projection portions includes a groove [221];
a semiconductor chip [25] arranged in a region surrounded by the wall portion [22] on the substrate [20]; and
a lid portion [23] arranged on the upper surface of the wall portion and sealing the semiconductor chip [25].
Tsai fails to explicitly disclose wherein each projection portion in the plurality of projection portions projects inward from an inner peripheral portion of the frame.
However, FuKamura discloses (Fig. 6(a),(b)) wherein each projection portion [9] in the plurality of projection portions [9] projects inward from an inner peripheral portion of the frame
[1].
It would have been obvious to one of ordinary skill in the art prior to effective filing date of the instant application because FuKamura teaches (Col. 11, lines 20-24) that such a modification improves performance of the image sensor of Tsai with respect to thermal expansion, i.e., lens focus is not affected by thermal expansion of resin material of the image sensor.
Regarding claim 6, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses wherein the groove portion is annularly provided (see Figs 2, 6, Col.3, lines 41-42 and 57-60) on the upper surface of the wall portion [22].
Regarding claim 9, Tsai in view of FuKamura discloses everything as applied above. Tsai fails to explicitly disclose wherein an upper end portion of each of the projection portions has a rounded shape in a cross section cut in a vertical direction.
However, in a different embodiment (Fig. 8) Tsai discloses a projection portion [321] that has a rounded shape in a cross section cut in a vertical direction.
It would have been obvious to one having ordinary skill in the art prior to effective filing date to modify the shapes of each of the projection portions of Tsai to trapezoidal because it was held that altering the shape of an element is obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)
Regarding claim 10, Tsai in view of FuKamura discloses everything as applied above. Tsai fails to explicitly disclose wherein an upper end portion of each of the projection portions has a trapezoidal shape in a cross section cut in a vertical direction.
However, in a different embodiment (Fig. 7) Tsai discloses a projection portion [323] which has a trapezoidal shape in a cross section cut in a vertical direction.
It would have been obvious to one having ordinary skill in the art prior to effective filing date to modify the shapes of each of the projection portions of Tsai to trapezoidal because it was held that altering the shape of an element is obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 11, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (see Fig. 6) wherein the wall portion [22] has three or more of the projection portions. FuKamura also discloses (Fig 6(a)) wherein the wall portion (inner sidewall of [1]) has three or more of the projection portions [9].
Regarding claim 13, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses further comprising a bonding member [24] arranged in a region where none of the projection portions are present (Figs 2,6, the adhesive, bonding member [24], is arrange both where the protrusions are present and where they are absent) in an upper surface portion of the wall portion [22], the bonding member bonding the frame [22] and the lid portion [23].
Regarding claim 14, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (Figs. 2, 6) wherein the bonding member [24] is arranged in at least a part of an inside of the groove portion.
Regarding claim 15, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (see Figs. 2, 6) wherein heights from an upper surface of the substrate to upper end portions of the plurality of projection portions are substantially equal.
Regarding claim 16, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (see Fig. 2) wherein the lid portion [23] is arranged substantially parallel to the substrate [20].
Regarding claim 17, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (Col. 1, lines 11-22, Col.3, line 18) wherein the semiconductor chip is an imaging element.
Regarding claim 18, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (Figs 2,6) wherein the lid portion [23] contains a material that allows light in a band including visible light to pass through (Col. 1, lines.37-42, which describes the general configuration for image sensors).
Regarding claim 19, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (Figs 2-6) wherein a surface of the lid portion [23] facing the substrate [20] is planar.
Regarding claim 20, Tsai in view of FuKamura discloses everything as applied above. Tsai further discloses (Figs 2-6) wherein the planar surface of the lid portion [23] extends over the plurality of projection portions.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et. al., U.S. Pat. 6,509,636, hereafter Tsai, in view of FuKamura et. al., U.S. Pat. 6,627,872, hereafter FuKamura, and further in view of Minamio et. al., U. S. Pat. 7,202,469, hereafter Minamio.
Regarding claim 2, Tsai in view of FuKamura discloses everything as applied above. Tsai in view of FuKamura fails to explicitly disclose wherein the semiconductor chip has at least one terminal, the substrate has at least one first pad and a wiring portion connected to the first pad, and the semiconductor device further includes a wire configured to electrically connect the terminal and the first pad.
However, Minamio discloses (Figs 1-3) wherein the semiconductor chip [2] has at least one terminal [2a], the substrate has at least one first pad [6a] and a wiring portion [6c] connected to the first pad, and the semiconductor device further includes a wire [7] configured to electrically connect the terminal [2a] and the first pad [6a].
It would have been obvious to one having ordinary skill in the art prior to effective filing date of the instant application to modify the image sensor package of Tsai with the teachings of electrical connection wiring of Minamio because electrodes and pads are necessary to power the encapsulated imaging chip. Such elements therefore must be present in the image sensor package of Tsai, although not explicitly disclosed.
Regarding claim 3, Tsai in view of FuKamuro in view of Minamio discloses everything as applied above. Minamio further discloses (Figs 1-3) further comprising a second pad [6b] arranged on a lower surface of the substrate [6] and electrically connected to the wiring portion [6c].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tsai et. al., U.S. Pat. 6,509,636, hereafter Tsai, in view of FuKamura et. al., U.S. Pat. 6,627,872, hereafter FuKamura, and further in view of Oi et. al., JPH10335970, hereafter Oi (of record).
Regarding claim 4, Tsai in view of FuKamura discloses everything as applied above. Tsai in view of FuKamura fails to explicitly disclose wherein the wall portion has a substantially rectangular shape in plan view from an upper surface side, and the plurality of projection portions is separately arranged on an inner peripheral side of two opposing sides of the wall portion.
However, Oi discloses (Figs 17,18) a package wherein the wall portion [15b] has a substantially rectangular shape in plan view from an upper surface side, and the plurality of projection portions [15a] is separately arranged on an inner peripheral side of two opposing sides of the wall portion.
It would have been obvious to one of ordinary skill in the art prior to effective date of the instant application because Oi teaches (par. [0044] of translation) “as is apparent from the above description, the surface mount type piezoelectric vibrator of the present invention has a convex portion provided on the sealing surface of the package member. Therefore, when the brazing material is placed on the sealing surface of the package member or after placing, there is no occurrence of displacement due to external vibration, impact, or the like.”
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR V BARZYKIN whose telephone number is (571)272-0508. The examiner can normally be reached Monday-Friday, 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRITT HANLEY can be reached at (571)270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICTOR V BARZYKIN/ Examiner, Art Unit 2893
/Britt Hanley/ Supervisory Patent Examiner, Art Unit 2893
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