DETAILED ACTION
This Office action is in response to the Request for Continued Examination (RCE) filed on 11 March 2026. Claims 1-15 and 17-21 are pending in the application. Claim 16 has been cancelled. Claim 21 is newly submitted.
This application is a continuation of application Serial No. 17/167,273, filed on 04 February 2021, now US Patent 11,688,685; which is a continuation of application Serial No. 15/897,272, filed on 15 February 2018, now US Patent 10,923,417; which claims priority to provisional application 62/490,063, filed 26 April 2017.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 January 2026 has been entered.
Terminal Disclaimer
The terminal disclaimers filed on 27 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patents 10,923,417 and the expiration date of US Patent 11,688,685 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 11-15, 17, 18, and 21 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.
Claim 11 has been amended to require “recessing the magnetic material with respect to the molding material, such that the magnetic material lying outside vertical projection of the molding material has a top surface lower than a top surface of the molding material”. Admittedly, Applicant’s specification does not expressly disclose that the magnetic material lying outside vertical projection of the molding material has a top surface lower than a top surface of the molding material, since Applicant’s specification does not use the term “vertical projection”. Furthermore, since the molding material 104 extends along the entire surface of the substrate 114, as shown in Figs. 1A-1C of the instant application, there is no support in Applicant’s originally-filed specification of the magnetic material of the magnetic structure 110 lying “outside vertical projection of the molding material” 104, as required in amended claim 11, since vertical projection of the molding material 104 would encompass or include all of the magnetic material of magnetic structure 110.
Since claims 12-15, 17, 18, and 21 depend from independent claim 11, these claims are also rejected under 35 U.S.C. 112(a).
Newly-submitted claim 21 requires the trace portions 108a and 108b to cover the magnetic material 110, without the molding material extending in between. However, this is clearly not supported by Applicant’s originally-filed disclosure, since Figs. 1A-1C clearly show that molding material 104 extends between both the trace portions 108a and 108b and between the trace portions 108a and 108b and the magnetic material 110.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-15, 17, 18, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 has been amended to require “recessing the magnetic material with respect to the molding material, such that the magnetic material lying outside vertical projection of the molding material has a top surface lower than a top surface of the molding material”. However, it is unclear what this limitation requires, since Applicant’s specification does not use the term “vertical projection”. Furthermore, since the molding material 104 extends along the entire surface of the substrate 114, as shown in Figs. 1A-1C of the instant application, and since independent claim 14 requires forming the magnetic material “in the molding material”, it is unclear how the magnetic material of the magnetic structure 110 can lie “outside vertical projection of the molding material” 104, as required in amended claim 11.
Newly-submitted claim 21 requires the trace portions to cover the magnetic material, without the molding material extending in between. It is unclear between what elements recited in the claim that the molding material is not between. Is the molding material not between the trace portions, or is the molding material not between the trace portions and the magnetic material?
The language of a claim must clearly and precisely define the metes and bounds of the claimed invention, since patented claims place the public on notice of the scope of the patentee's right to exclude. It is important that a person of ordinary skill in the art be able to interpret the metes and bounds of the claims so as to understand how to avoid infringement of the patent that ultimately issues from this application.
Claims 12-15, 17, and 18 are rejected, since they inherit the indefiniteness of the claims from which they depend.
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 11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Jou et al., US 2014/0111273, of record.
With respect to claim 11, Jou et al. disclose a method comprising:
forming a molding material 302 around a die 904 (see paragraph [0027]) and vias, as shown in Fig. 9, see paragraph [0020];
forming a magnetic material 202 within the molding material 302, see Figs. 3B and 3C and paragraph [0019];
recessing the magnetic material 202 with respect to the molding material 302, such that the magnetic material 202 lying outside vertical projection of the molding material has a top surface lower than a top surface of the molding material 302; (In so far as the claim language is understood, this limitation is deemed taught by Jou et al., since Jou et al. teach that a top surface of the magnetic material 202 is below a top surface of the molding material 302, as shown in Fig. 9 of Jou et al.); and
forming trace portions covering a top surface of the molding material 302, the vias and the trace portions surrounding the magnetic material 202, as shown in Figs. 5B, 6B, 7, 8, and 9.
With respect to claim 17., in the method of Jou et al., the die 904 is disposed between the trace portions and the vias.
Claims 11-12, and 17 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Chen, US 2016/0233292, of record.
With respect to claim 11, Chen discloses a method comprising:
forming a molding material 10 around a die 13 and vias 16v/17v/15, as shown in Figs. 6A-6C, see paragraphs [0015]-[0016] and [0056]-[0057];
forming a magnetic material 20 within the molding material 10, see Figs. 4 and 6D and paragraph [0057];
recessing the magnetic material 20 with respect to a top surface of the molding material 10, such that the magnetic material 20 lying outside vertical projection of the molding material has a top surface lower than a top surface of the molding material 10; (In so far as the claim language is understood, this limitation is deemed taught by Chen, since Chen teach that a top surface of the magnetic material 20 is below a top surface of the molding material 10, as shown in Fig. 6C of Chen.); and
forming trace portions 14a/16a covering a top surface of the molding material 10, the vias 16v/17v/15 and the trace portions 14a/14b surrounding the magnetic material 20, see paragraph [0057]..
With respect to claim 12, Chen discloses the magnetic structure 20 comprises at least one material selected from the group consisting of CuFe2O4, BiFe5O12, NiFe alloy, and CoTaZr alloy, see paragraph [0057].
With respect to claim 17, in the method of Chen, the die 1 is disposed between the trace portions 14a and the vias 16v/17v/15, as shown in Figs. 4 and 6D..
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 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jou et al., US 2014/0111273, as applied to claim 11 above, further in view of Liao US PG Pub. 2014/0347025, cited by Applicant on the Information Disclosure Statement submitted on 25 May 2025.
Jou et al. is applied as above. With respect to claim 12, although Jou et al. discloses the magnetic structure/material 202, Jou et al. do not specifically disclose the magnetic structure/material comprises at least one material selected form the group consisting of CuFe2O4, BiFe5O12, NiFe alloy, and CoTaZr alloy. Liao discloses a magnetic structure/material of an inductor can be selected from the group consisting of CuFe2O4, BiFe5O12, NiFe alloy, and CoTaZr alloy (paragraph [0044]). Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Liao in the known method of Jou et al., since these materials are commonly used in the fabrication of inductors.
With respect to claim 13, although Jou et al. discloses the magnetic structure/material 202, Jou et al. do not specifically disclose the magnetic structure/material comprises in atomic percentage about 40% Ni, about 40% Zn, and about 20% CuFe2O4. Liao discloses the magnetic structure/material of an inductor can comprise in atomic percentage about 40% Ni, about 40% Zn, and about 20% CuFe2O4., see paragraph [0045].. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Liao in the known method of Jou et al., since these magnetic materials are commonly used in the fabrication of inductors.
With respect to claim 14, although Jou et al. discloses the magnetic structure/material 202, Jou et al. do not specifically disclose the magnetic structure/material comprises in atomic percentage about 80% Y and about 20% BiFe5O12. Liao discloses the magnetic structure/material comprises in atomic percentage about 80% Y and about 20% BiFe5O12, see paragraph [0045].. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Liao in the known method of Jou et al., since these magnetic materials are commonly used in the fabrication of inductors.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jou et al., US 2014/0111273, as applied to claim 11 above, further in view Gardner, US 2001/0030591, of record.
Jou et al. is applied as above. With respect to claim 15, although Jou et al. discloses the magnetic structure/material 202, Jou et al. do not specifically disclose the magnetic structure/material comprises an alloy in atomic percentage of about 91.5% Co, about 4.5% Ta, and about 4% Zr. Gardner discloses an inductor with a magnetic core comprising 91.5 atomic percent cobalt (Co), approximately 4 atomic percent zirconium (Zr), and approximately 4.5 atomic percent tantalum (Ta). This CoZrTa alloy can operate in the gigaHertz range and can withstand temperatures up to approximately 450oC without crystallizing or significantly changing its relevant properties, see paragraph [0034]. In light of the teaching of Gardner, it would have been obvious to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Gardner in the known method of Jou et al., since this CoZrTa alloy can operate in the gigaHertz range and can withstand temperatures up to approximately 450oC without crystallizing or significantly changing its relevant properties.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, US 2016/0233292, as applied to claims 1 and 11 above, further in view of Liao US PG Pub. 2014/0347025, cited by Applicant on the Information Disclosure Statement submitted on 25 May 2025.
Chen is applied as above. With respect to claim 13, although Chen does disclose the magnetic structure/material 20, Chen does not specifically disclose the magnetic structure/material comprises in atomic percentage about 40% Ni, about 40% Zn, and about 20% CuFe2O4. Liao discloses the magnetic structure/material of an inductor can comprise in atomic percentage about 40% Ni, about 40% Zn, and about 20% CuFe2O4., see paragraph [0045].. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Liao in the known method of Chen, since these magnetic materials are commonly used in the fabrication of inductors.
With respect to claim 14, although Chen discloses the magnetic structure/material 20, Chen does not specifically disclose the magnetic structure/material comprises in atomic percentage about 80% Y and about 20% BiFe5O12. Liao discloses the magnetic structure/material comprises in atomic percentage about 80% Y and about 20% BiFe5O12, see paragraph [0045].. Therefore, it would have been obvious at the time the invention was made to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Liao in the known method of Chen, since these magnetic materials are commonly used in the fabrication of inductors.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Chen, US 2016/0233292, as applied to claims 1 and 11 above, further in view Gardner, US 2001/0030591, of record.
Chen is applied as above. With respect to claims 6 and 15, although Chen discloses the magnetic structure/material 20, Chen does not specifically disclose the magnetic structure/material comprises an alloy in atomic percentage of about 91.5% Co, about 4.5% Ta, and about 4% Zr. Gardner discloses an inductor with a magnetic core comprising 91.5 atomic percent cobalt (Co), approximately 4 atomic percent zirconium (Zr), and approximately 4.5 atomic percent tantalum (Ta). This CoZrTa alloy can operate in the gigaHertz range and can withstand temperatures up to approximately 450oC without crystallizing or significantly changing its relevant properties, see paragraph [0034]. In light of the teaching of Gardner, it would have been obvious to a person having ordinary skill in the art to use the magnetic structure/material disclosed by Gardner in the known method of Chen, since this CoZrTa alloy can operate in the gigaHertz range and can withstand temperatures up to approximately 450oC without crystallizing or significantly changing its relevant properties.
Allowable Subject Matter
Claims 1-10, 19, and 20 are allowable over the prior art of record.
The following is a statement of reasons for the indication of allowable subject matter: None of the references of record teach or suggest a method comprising the steps of forming a molding material around vias; planarizing the molding material;
forming a magnetic material within/in the molding material; and forming trace portions covering a top surface of the molding material, as required in independent claims 1 and 19.
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Neither Jou et al. nor Chen disclose a method further comprising: forming the vias in a sacrificial layer disposed on a first electrically insulating layer, the vias being electrically connected to the trace portions; removing the sacrificial layer and forming a second electrically insulating layer on the first electrically insulating layer; and placing the die above the second electrically insulating layer, wherein the sacrificial layer comprises photoresist..
Response to Arguments
Applicant's arguments filed 27 January 2026 have been fully considered but they are not persuasive in light of the new grounds of rejection..
Independent claim 11 has been amended to require "recessing the magnetic material with respect to the molding material, such that the magnetic material lying outside vertical projection of the molding material has a top surface lower than a top surface of the molding material." However, as noted in the above rejections, Applicant’s originally-filed disclosure does not provide support for this limitation under 35 U.S.C. 112(a), nor is what is required by this limitation clear under 35 U.S.C. 112(b). In so far as this limitation is understood, it does not patentably distinguish Applicant’s claimed method from that of Jou et al. or Chen, since both Jou et al. and Chen disclose that the magnetic material has a top surface lower than a top surface of the molding material. Jou et al. teach that a top surface of the magnetic material 202 is below a top surface of the molding material 302, as shown in Fig. 9 of Jou et al. Chen teach that a top surface of the magnetic material 20 is below a top surface of the molding material 10, as shown in Fig. 6C of Chen.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose various methods of fabricating a package with an inductor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY A WILCZEWSKI whose telephone number is (571)272-1849. The examiner can normally be reached M-TH 7:30 AM-5:00 PM.
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MARY A. WILCZEWSKI
Primary Examiner
Art Unit 2898
/MARY A WILCZEWSKI/Primary Examiner, Art Unit 2898