Notice of Pre-AIA or AIA Status
The present application, filed after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112(a)
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.
Claims 15-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claim 15 is rejected because it recites that "part of the injection molding material layer above the optical coupling interface has a through hole" such that "the lower opening of the through hole covers the optical coupling interface". It is understood that "injection molding material" corresponds to encapsulant 400 and "optical coupling interface" corresponds to 200b (note the 5/20/2025 and 11/5/2025 remarks). However no through hole in the encapsulant layer 400, having a lower opening which covers the optical coupling interface, was illustrated or described in the originally filed disclosure.
Claims 16-20 are rejected by dependence from claim 15.
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.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2006/0054901 A1.
Claim 15: The process of manufacturing the '901 device of fig. 21A constitutes a three-dimensional packaging method of a photonic-electronic chip, comprising:
providing a photonic chip 502 with a first surface (upper surface in fig. 21A) and a second surface (lower surface) which are opposite to each other;
forming an optical coupling adhesive layer 513 ("silicone resin portion") on a second area of the first surface of the photonic chip, wherein the photonic chip is provided with an optical coupling interface (where it faces lens 510) at the second area, and the optical coupling adhesive layer covers the optical coupling interface; and
forming an injection molding material layer 514 on the first surface of the photonic chip, the injection molding material layer surrounds the optical coupling adhesive layer 513, wherein the part of the injection molding material layer above the optical coupling interface has a through hole 516 with upper and lower openings connected up and down, and the coverage area of the lower opening of the through hole covers the optical coupling interface.
Response to Arguments
The specification and claim objections of the 8/6/2025 action have been overcome by amendments. The double patenting rejection appears to have been erroneous and is withdrawn.
35 U.S.C. 112(a) rejections
The rejection of claims 1-7 and the individual rejections of claims 4, 14, and 16 were overcome by amendments.
The rejection of claims 8-14 is withdrawn. The remarks at pp. 20-21 refer to fig. 3G and [0036] which mentions an ablation process that removes the wall structure WS. After reconsideration it is observed that a trench TR (albeit partly occupied with WS) does extend completely through the dummy chip as of the state shown in fig. 3G and continuing through the state shown in fig. 3I. The possibility that this trench could be empty (i.e. free of WS and thus having connected upper and lower openings) appears to be supported by the third sentence of [0036] which states that "After removing the wall structure WS", the remaining parts CR and PC may be "picked-up and removed" (emphasis added).
The rejection of claims 15-20 is maintained. The remarks at p. 22 assert that the recited through hole in the injection molding material layer is shown in fig. 3J. However, the process proceeding from the state of fig. 3I to the state of fig. 3J appears to have no effect on the injection molding material layer 400b. It does not form a through hole in the injection molding material layer as the term "through hole" is conventionally understood, and no upper and lower openings in the injection molding material layer are identified by the remarks or shown in the figures.
35 U.S.C. 112(b) rejections
The rejection of claims 1-20 has been reconsidered and is withdrawn. MPEP 2172(III) appears to acknowledge that the subject matter which is regarded as an invention may vary during prosecution, including in continuing applications.
The individual indefiniteness rejections of claim 16 and 18 were overcome by amendments.
Allowable Subject Matter
Claims 1-14 are allowed. Dependent claims 16-20 are not subject to a prior art rejection in this action and presumably would be allowable if rewritten in independent form including all the limitations of claim 15 and all applicable intervening claims, and if the rewriting overcomes the 35 U.S.C. 112(a) rejection above.
Conclusion
This action is not made final. The additional references listed on the attached 892 form are considered generally relevant to the subject matter of this application.
Contact Information
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Examiner's direct supervisor: 571-272-2397
Official correspondence by fax: 571-273-8300
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/Michael Stahl/Primary Examiner, Art Unit 2874