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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-17 and 20 in the reply filed on 01/22/2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden in searching all 20 claims. Upon reconsideration, this is not found persuasive because Applicants arguments simply state that there is no serious search burden without explaining how there is no serious search burden or addressing Examiners previous reasoning why the serious search burden exists in original restriction requirement dated 12/31/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18-19 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/22/2026.
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 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(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim 1 is 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 1 intends to invoke 35 U.S.C. 112(f) with the limitation of “a detection controller configured to …”. This means that the limitation is to be read as covering the corresponding structure, materials, or acts in the specification. However, in the instant application, there is not sufficient material in the specification to reasonable convey enable one
In claim 1, claim limitation “a detection controller configured to …” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The claim uses the generic placeholder of “a detection controller” then proceeds to claim the functional aspects of what the controller performs such as inducing electrical short circuits between the crack detection structures, applying a test input to the first crack detection structure, determining if a progressive crack occurs in the central region, etc. However, the disclosure is devoid of any structure that performs the function in the claim beyond simply recalling the generic placeholder. Therefore, in the disclosure there is no association between the structure and the function that can be found in the specification.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
CLAIM INTERPRETATION
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication by Kwon et al (US 20210018553 A1; Kwon).
Regarding claim 1, Kwon discloses a semiconductor device comprising:
a semiconductor die (10) including a central region (internal region) in which a semiconductor integrated circuit is arranged and an external region surrounding the central region (Para. 5);
a chip guard ring (20) inside the semiconductor die along an edge of the semiconductor die, the chip guard ring separating the central region and the external region (Abstract, “a guard ring formed inside the chip along an edge of the chip to define the internal region and the external region”);
a first crack detection (100a) structure along an edge of the central region and in a closed curve;
a second crack detection structure (100b) along the edge of the central region in a closed curve, the second crack detection structure being spaced apart from the chip guard ring farther than the first crack detection structure (Fig. 10, where the first crack detection structure 100a is closer to the guard ring 20 than the second crack detection structure 100b, and the crack detections structures are both a closed loop within the central region); and
a detection controller (500) configured to:
in a first phase, induce an electrical short circuit between the first crack detection structure and the second crack detection structure by applying a first power to the first crack detection structure and by applying a second power greater than the first power to the second crack detection structure;
in a second phase, apply a test input signal to the first crack detection structure; and
determine whether a progressive crack occurs in the central region based on whether a test output signal responding to the test input signal is detected in the second crack detection structure in the second phase.
The Examiner notes that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Pearson, 181 USPQ 641 (CCPA); In re Minks, 169 USPQ 120 (Bd Appeals); In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See MPEP § 2114.
As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use, (B) "adapted to" or “adapted for" clauses, (C) "wherein" clauses, or (D) "whereby" clauses. Accordingly, as no further positive structural limitations have been claimed, the device of Kwon is sufficient to be used in the instant manner and anticipates the claim. The recitation of what the detection controller is “configured to” do does not distinguish the present invention over the prior art of Kwon who teaches the structure as claimed.
Typically, an exception that would allow a device claim be limited by what the device does instead of the structural limitations, would be when the claim invokes 35 U.S.C. 112(f) by passing a three-pronged test. Claim 1 appears to attempt to invoke 112(f) by properly passing all 3 prongs, see MPEP 2181(I), where the claim uses the generic placeholder of a “detection controller”, the generic placeholder is modified by “configured to”, and the generic placeholder is not modified by sufficient structure material or acts for performing the claimed function. When 112(f) Is invoked, the generic placeholder, in this case the device controller, is supposed to recite needed specific structure in the specification to support the claim. However, there is no corresponding structure of the device controller found in the specification. In an effort for compact prosecution, Examiner believes that is would be more proper to treat the claim, and any dependent claims that rely on limiting the device solely on the functions of the detection controller, as “intended use” claims. Instead of the narrower 112(f) means plus function claims. However, regardless, appropriate action is needed to clear up how applicant wants to proceed.
Regarding Claims 2-9, the claim limitations of these dependent claims are directed at fictional language of what the device controller is configured to do. Similarly, the recitation of what the detection controller is “configured to” do does not distinguish the present invention over the prior art of Kwon who teaches the structure as claimed, therefore these claims are also rejected by Kwon.
Regarding claim 20, Kwon discloses a semiconductor device comprising:
a semiconductor die (10) including a central region (internal region) in which a semiconductor integrated circuit is arranged and an external region surrounding the central region (Para. 5);
a chip guard ring (20) inside the semiconductor die along an edge of the semiconductor die, the chip guard ring separating the central region and the external region (Abstract, “a guard ring formed inside the chip along an edge of the chip to define the internal region and the external region”);
a first detection (100a) structure along an edge of the central region and in a closed curve;
a detection controller configured to:
induce an electrical short circuit between the crack detection structure and the chip guard ring by applying a power to the crack detection structure during a first time interval in a first phase;
apply a test input signal to the crack detection structure in a second phase;
and
determine whether a progressive crack occurs in the central region based on whether a test output signal responding to the test input signal is detected in the crack detection structure in the second phase.
The Examiner notes that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See, e.g., In re Pearson, 181 USPQ 641 (CCPA); In re Minks, 169 USPQ 120 (Bd Appeals); In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See MPEP § 2114.
As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use, (B) "adapted to" or “adapted for" clauses, (C) "wherein" clauses, or (D) "whereby" clauses. Accordingly, as no further positive structural limitations have been claimed, the device of Kwon is sufficient to be used in the instant manner and anticipates the claim. The recitation of what the detection controller is “configured to” do does not distinguish the present invention over the prior art of Kwon who teaches the structure as claimed.
Typically, an exception that would allow a device claim be limited by what the device does instead of the structural limitations, would be when the claim invokes 35 U.S.C. 112(f) by passing a three-pronged test. Claim 1 appears to attempt to invoke 112(f) by properly passing all 3 prongs, see MPEP 2181(I), where the claim uses the generic placeholder of a “detection controller”, the generic placeholder is modified by “configured to”, and the generic placeholder is not modified by sufficient structure material or acts for performing the claimed function. When 112(f) Is invoked, the generic placeholder, in this case the device controller, is supposed to recite needed specific structure in the specification to support the claim. However, there is no corresponding structure of the device controller found in the specification. In an effort for compact prosecution, Examiner believes that is would be more proper to treat the claim, and any dependent claims that rely on limiting the device solely on the functions of the detection controller, as “intended use” claims. Instead of the narrower 112(f) means plus function claims. However, regardless, appropriate action is needed to clear up how applicant wants to proceed.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable as obviousness by Kwon in view of United States Patent Application Publication by Kim et al. (US 20210074596 A1; Kim).
Regarding claim 10, Kwon discloses the semiconductor device of claim 1, however, Kwon fails to explicitly disclose the semiconductor device further comprising:
a first switch circuit and a second switch.
In a similar field of endeavor, Kim discloses a semiconductor device (1000), with an external region (EREG), central region (CREG), and multiple crack detection structures ICDS(1-4), where the crack detection structures are connected to a device controller (510 - CDET). Furthermore, Kim also discloses switches (SWI1, SWO1, SWO, SSI1) which are connected to the crack detection structures and the controller respectively (Para. 40-44).
Examiner Note - Dissimilar to the device controller, it is unreasonable to consider a “switch” as a generic placeholder, therefore even with the “configured to” language, it is unreasonable to interpret the functional language of what the switch/s do under 112(f) as a means + function claim limitation. Instead, the functional language of what the switch/s do will not support patentability. Only the structural limitations may patentably differentiate the claimed product from the prior art, See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973).
In view of the disclosure of Kim, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Kim to Kwon at the time the instant application was filed to incorporate having switching elements to be used by the controller and the crack detection structure. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that when using a crack detection structure, having switching elements allows for events to happen as a result of a detection of a crack (Kwon: Para. 44).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable as obviousness by Kwon in view of United States Patent Application Publication by Roh et al. (US 20210311104 A1; Roh).
Regarding claim 11, Kwon discloses the semiconductor device, wherein the semiconductor die includes a plurality of conduction layers stacked in a vertical direction (Fig. 2, where at least wirings 100 and 110 are shown, and para. 38-46 discussing the formation of regions of the chip[die]).
However, Kwon fails to disclose where the crack detections structures are shaped differently where one crack detection structure includes a vertical loop and the other crack detection structure being a horizontal loop.
In a similar field of endeavor, Roh discloses a semiconductor device (100), with an external region (PREG), central region (CREG), and crack detection structures (LP1-4 and SLP; Para. 85), where the crack detection structures are connected to a device controller (510 - CDET). Furthermore, Roh also discloses where a crack detection structure includes a vertical conduction loop extending in the vertical direction through the plurality of conduction layers (Figs. 9A-9C), wherein the vertical conduction loop includes:
a plurality of horizontal lines (HL1) in a respective one of the plurality of conduction layers; and
a plurality of vertical lines (VL) connecting each of the plurality of horizontal lines (See Fig. 9A-C where each of the horizontal lines HL1 are connected to vertical lines VL forming a vertical loop), and
wherein the second crack detection structure includes a plurality of horizontal conduction loops, each of the plurality of horizontal conduction loops being arranged in respective one of the pluralities of conduction layers (See fig. 9A-C where the non vertical crack detection loops, can be seen as the ones that are horizontal).
In view of the disclosure of Roh, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Roh to Kwon at the time the instant application was filed to incorporate having the multiple types of crack detection structures to including one that has vertical components through the conduction layers making a vertical loop. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that having the crack detection structure extend in the vertical direction would improve crack detection accuracy (Roh: Para. 80, “Accordingly, the cracks may be detected more accurately by extending, in the vertical direction Z, at least one horizontal line forming the conduction loop and/or the shielding loop”).
Claim 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon in view of Roh and further in view of Kim.
Regarding claim 12, the combination of Kown and Roh discloses the semiconductor device of claim 11. Furthermore, Kown discloses the claim limitations of what the device controller is configured to do as the limitation is directed at fictional language. The recitation of what the detection controller is “configured to” do does not distinguish the present invention over the prior art of Kwon who teaches the structure as claimed.
However, the combination of Kown and Roh fails to disclose the semiconductor device further comprising: a first switch circuit and a second switch.
Examiner Note - Dissimilar to the device controller, it is unreasonable to consider a “switch” as a generic placeholder, therefore even with the “configured to” language, it is unreasonable to interpret the functional language of what the switch/s do under 112(f) as a means + function claim limitation. Instead, the functional language of what the switch/s do will not support patentability. Only the structural limitations may patentably differentiate the claimed product from the prior art, See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973).
In a similar field of endeavor, Kim discloses a semiconductor device (1000), with an external region (EREG), central region (CREG), and multiple crack detection structures ICDS(1-4), where the crack detection structures are connected to a device controller (510 - CDET). Furthermore, Kim also discloses switches (SWI1, SWO1, SWO, SSI1) which are connected to the crack detection structures and the controller respectively (Para. 40-44).
In view of the disclosure of Kim, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Kim to the combination of Kwon Roh at the time the instant application was filed to incorporate having switching elements to be used by the controller and the crack detection structure. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that when using a crack detection structure, having switching elements allows for events to happen as a result of a detection of a crack (Kwon: Para. 44).
Regarding claim 13, the combination of Kown, Roh, and Kim discloses the semiconductor device of claim 12, and further wherein, in response to the first switching control signal, the first switch circuit is configured to:
provide the first power to the first crack detection structure during the first time interval in the first phase;
provide the test input signal to the first crack detection structure during the second time interval in the second phase.
Only the structural limitations may patentably differentiate the claimed product from the prior art, See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973). Therefore, because no other structural limitations are in the claim, the combination of Kown, Roh, and Kim still discloses the claimed invention including the limitations of claim 13.
Regarding claim 14, the combination of Kown, Roh, and Kim discloses the semiconductor device of claim 12, and further wherein, in response to the second switching control signal and the third switching control signal, the second switch circuit is configured to:
provide the second power to the second crack detection structure during the first time interval in the first phase;
connect the second crack detection structure to the detection controller during the second time interval in the second phase.
Only the structural limitations may patentably differentiate the claimed product from the prior art, See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973). Therefore, because no other structural limitations are in the claim, the combination of Kown, Roh, and Kim still discloses the claimed invention including the limitations of claim 14.
Allowable Subject Matter
Claims 15-17 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:
Regarding claim 15, the combination of Kown, Roh, and Kim discloses the semiconductor device of claim 12, and further wherein the second switch circuit comprises:
a first sub switch (Inner switch such as SWI1) connected between the detection controller and a first node (Kim: Para. 40, “The inner switch SWI1 may be connected between the first inner crack detection structure ICDS1 and the first loop segment LPS2”);
However, the combination, nor the prior art as a whole, fails to disclose where a plurality of second sub switches commonly connected to the first node and connected to the plurality of horizontal conduction loops, respectively. While, Kim does disclose switching elements used between the crack detection structures and the controllers and/or pads. There does not appear to be prior art either anticipating or as in an obvious combination, where there is a plurality of sub switches that are each connected to the horizontal conduction loops.
Dependent claims 16 and 17 are also indicated to contain allowable subject matter as they depend on claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J HIBBERT whose telephone number is (703)756-1562. The examiner can normally be reached Monday - Friday 8am-5pm EST.
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/DANIEL J HIBBERT/Examiner, Art Unit 2899
/ZANDRA V SMITH/Supervisory Patent Examiner, Art Unit 2899
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