DETAILED ACTION
Allowable Subject Matter
Claims 1-6 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding dependent claim 1, the prior art of record alone or in combination neither teaches nor makes obvious the invention of a heat spreader for use with a semiconductor component, comprising below limitations in combination with other limitations of the instant claim as a whole:
wherein each of the extensions is formed by bending a tab within the respective hole downwards, such that the tab extends below the bottom surface.
Claims 2-6 are also allowed as they depend on claim 1.
Response to Arguments
Applicant’s arguments with respect to the newly amended independent claim 1 has been considered and the rejection is withdrawn. Thus, claims 1-6 are allowed.
Applicant neither amended independent claim 7, nor placed any arguments on the rejection using prior Sawada et al. (US 20100218929 A1). Thus, the rejection is still used in current office action.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 7-8 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sawada et al. (US 20100218929 A1, hereinafter Sawada‘929) of record.
Regarding independent claim 7, Sawada‘929 teaches, “A semiconductor device (fig. 1-22; ¶ [0006] – [0090]), comprising:
a semiconductor component (A);
a heat spreader, wherein the heat spreader comprises:
a body (10, 15, fig. 1A-1B) having a bottom surface to be in thermal contact with the semiconductor component (A), and a top surface opposite to the bottom surface;
a plurality of holes (12, 14, 16) disposed at a non-peripheral region of the body (10, 15), wherein each hole passes through the body between the top surface and the bottom surface; and
a plurality of extensions (17) each being disposed within one of the plurality of holes (12, 14, 16) and extending from the top surface and downward below the bottom surface,
wherein the plurality of extensions (17) is configured to hold the semiconductor component (A) when the heat spreader is mounted with the semiconductor component (A)”.
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Regarding claims 8, Sawada‘929 further teaches, “wherein the plurality of holes and the plurality of extensions are arranged in a two-dimensional array on the body (fig. 11-12)”.
Regarding claim 13, Sawada‘929 further teaches, “The semiconductor device of claim 7, further comprising: a substrate (P, fig. 1B), wherein the semiconductor component (A) is attached to the substrate (P) and the heat spreader (11, 15) is not in contact with the substrate (P)”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sawada‘929 as applied to claim 1 and 7 as above, and further in view of JIANG WEN-FU (TW M332362 U) of record.
Regarding claim 9, Sawada‘929 teaches all the limitations described in 7.
But Sawada‘929 is silent upon the provision of wherein the plurality of extensions are integrally formed with the body.
However, JIANG WEN-FU teaches a similar structure (fig. 2), wherein the plurality of extensions (202) are integrally formed with the body.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to combine the teachings of Sawada‘929 and JIANG WEN-FU to form the plurality of extensions integrally with the body according to the teachings of JIANG WEN-FU with a general motivation to achieve manufacturing simplicity and reduced manufacturing cost.
Regarding claim 10, Sawada‘929 and JIANG WEN-FU further teach, wherein the plurality of extensions (202, fig. 2) are bent away from the top surface to hold the semiconductor component therein.
Regarding claim 11, “wherein the plurality of holes are formed by cutting the body”, Sawada‘929 and JIANG WEN-FU further teach, the plurality of holes (12, 14, 16) and the plurality of extensions (17). The language, term, or phrase "formed by cutting in the body" is directed towards the process of making an encapsulated device. 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.
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sawada‘929.
Regarding claim 12, “wherein the plurality of holes and the plurality of extensions are formed by cutting in the body non-closed slits each separating an extension from a respective hole”, Sawada‘929 teaches the plurality of holes (12, 14, 16) and the plurality of extensions (17). The language, term, or phrase "formed by cutting in the body" is directed towards the process of making an encapsulated device. 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.
Examiner’s Note
Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants' definition which is not specifically set forth in the claims. See MPEP 2111, 2123, 2125, 2141.02 VI, and 2182.
Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 MOHAMMAD M HOQUE whose telephone number is (571)272-6266. The examiner can normally be reached 9AM-7PM EST.
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/MOHAMMAD M HOQUE/Primary Examiner, Art Unit 2817