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 .
Election/Restrictions
Applicant's election with traverse of species 5, Fig. 6A in the reply filed on 12/15/2025 is acknowledged. The traversal is on the ground(s) that “the embodiments share substantially the same technical features, and, thus, there is no serious burden placed upon the Examiner. See, e.g., MPEP § 808 (explaining that "[e]very requirement why each invention as claimed is either independent to restrict has two aspects: (A) the reasons or distinct from the other(s); and (B) the reasons why there would be a serious search and/or examination burden on the examiner"). This is not found persuasive because as stated in the restriction/election requirement, these different embodiments are identified as distinct Figures having feature(s) that is/are mutually exclusive from each other. Specifically, species 1 of Fig. 2A requires a capacitor connected in parallel with the first and second wires, species 2 of Fig. 3A requires a capacitor connected in series with the first and second wires, species 3 of Fig. 4A requires a resistance element connected in parallel with the first and second wires, species 4 of Fig. 5A requires a microstrip line connected in parallel with the first and second wires and connected to an equipotential terminal supplying a power supply voltage, species 5 of Fig. 6A requires a microstrip line is connected in parallel with the first and second wires and is not connected to an equipotential terminal supplying a power supply voltage, species 6 of Fig. 7A requires a microstrip line connected in series with the first and second wires.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least one or more of the following reasons apply:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
In addition, non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) are relevant to one species or grouping of patentably indistinct species that are not relevant to the other species or grouping(s) of patentably indistinct species; and/or prior art applied to one species or grouping of patentably indistinct species that cannot be applied to the other species or grouping(s) of patentably indistinct species.
“If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.” 35 U.S.C. 121.
“A requirement for restriction is permissible if there is a patentable difference between the species as claimed and there would be a serious search and/or examination burden on the examiner if restriction is not required.” MPEP 808.01 (a).
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 2-4, 6, 8, 10-12, 14 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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 9, 13, 15 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.
Regarding claim 9, claim 9 recites the limitation “the other end” in lines 7 and 8. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of this Action, the above limitation of claim 9 will be interpreted and examined as --another end--.
Claims depending from the rejected claims noted above are rejected at least on the same basis as the claim(s) from which the dependent claims depend.
Appropriate correction is required.
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 and 9 are rejected under 35 U.S.C. 102 (a)(1)/(a)(2) as being anticipated by Yuen et al. (US Pub. 20140036471).
Regarding claim 1, Yen et al. discloses in Fig. 1, paragraph [0023]-[0024] a semiconductor package comprising:
a semiconductor chip [104] comprising an integrated circuit (IC) pad configured to output a wireless frequency signal;
a lead frame comprising a package pad [114] configured to receive the wireless frequency signal;
a first wire [138] of which one end is connected to the IC pad;
a second wire [140] of which one end is connected to the package pad [114]; and
a circuit element [136] connected to the first wire [138] and the second wire [140] in parallel or in series, wherein a radio frequency (RF) output impedance of the package pad or an RF output impedance of the IC pad is controlled by a type of the circuit element or a connection relationship between the circuit element, the first wire, and the second wire.
Notes, the limitations “configured to output a wireless frequency signal”, “configured to receive the wireless frequency signal”, “wherein a radio frequency (RF) output impedance of the package pad or an RF output impedance of the IC pad is controlled by a type of the circuit element or a connection relationship between the circuit element, the first wire, and the second wire” direct to manner of operation and intended function of the device. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114II. Further, 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.
Regarding claim 9. Yen et al. discloses in Fig. 1, paragraph [0023]-[0024] a semiconductor package comprising:
a semiconductor chip [104] comprising an integrated circuit (IC) pad configured to output a wireless frequency signal;
a lead frame comprising a package pad [114] configured to receive the wireless frequency signal;
a passive element [136] placed between the IC pad and the package pad [114];
a first wire [138] of which one end is connected to the IC pad and another end is connected to the passive element [136]; and
a second wire [140] of which one end is connected to the package pad [114] and another end is connected to the passive element [136].
Notes, the limitations “configured to output a wireless frequency signal”, “configured to receive the wireless frequency signal” direct to manner of operation and intended function of the device. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114II. Further, 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.
Claims 1 and 9 are rejected under 35 U.S.C. 102 (a)(1)/(a)(2) as being anticipated by Haas, Jr. et al. (US Pat. 5536906).
Regarding claim 1, Haas, Jr. et al. discloses in Fig. 1, Fig. 3, columns 2-4 a semiconductor package comprising:
a semiconductor chip [20 or 42] comprising an integrated circuit (IC) pad configured to output a wireless frequency signal;
a lead frame [30, 32 or 38] or [48] comprising a package pad configured to receive the wireless frequency signal;
a first wire [29] of which one end is connected to the IC pad;
a second wire [29] of which one end is connected to the package pad; and
a circuit element [26 or 28 or 45] connected to the first wire [29] and the second wire [29] in parallel or in series, wherein a radio frequency (RF) output impedance of the package pad or an RF output impedance of the IC pad is controlled by a type of the circuit element or a connection relationship between the circuit element, the first wire, and the second wire.
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Notes, the limitations “configured to output a wireless frequency signal”, “configured to receive the wireless frequency signal”, “wherein a radio frequency (RF) output impedance of the package pad or an RF output impedance of the IC pad is controlled by a type of the circuit element or a connection relationship between the circuit element, the first wire, and the second wire” direct to manner of operation and intended function of the device. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114II. Further, 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.
Regarding claim 9, Haas, Jr. et al. discloses in Fig. 1, Fig. 3, columns 2-4 a semiconductor package comprising:
a semiconductor chip [20 or 42] comprising an integrated circuit (IC) pad configured to output a wireless frequency signal;
a lead frame [30, 32 or 38] or [48] comprising a package pad configured to receive the wireless frequency signal;
a passive element [26 or 28 or 45] placed between the IC pad and the package pad;
a first wire [29] of which one end is connected to the IC pad and another end is connected to the passive element [26 or 28 or 45]; and
a second wire [29] of which one end is connected to the package pad and another end is connected to the passive element [26 or 28 or 45].
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Notes, the limitations “configured to output a wireless frequency signal”, “configured to receive the wireless frequency signal” direct to manner of operation and intended function of the device. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114II. Further, 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.
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 5, 7, 13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Haas, Jr. et al. (US Pat. 5536906) as applied to claims 1 and 9 above and further in view of Chang et al. (US Pub. 20050237131) and Mitzlaff (US Pub. 4717884).
Regarding claims 5, 7, 13 and 15, Haas, Jr. et al. discloses in Fig. 1, Fig. 3, columns 2-4 wherein the circuit element/the passive element [26 or 28 or 45] is a microstrip line.
Haas, Jr. et al. fails to disclose
wherein the microstrip line is connected to the first wire and the second wire in parallel; and
wherein the microstrip line is not connected to an equipotential terminal supplying a power supply voltage.
Chang et al. discloses in Fig. 1, Fig. 4, Fig. 5,
wherein the microstrip line [103 or 104] or [401 or 402] is connected to the first wire [110 or 301] and the second wire [111 or 302] in parallel; and
wherein the microstrip line [401 or 402] is not connected to an equipotential terminal supplying a power supply voltage.
Mitzlaff also discloses in Fig. 8
wherein the microstrip line [811] is connected to a wire in parallel; and
wherein the microstrip line [811] is not connected to an equipotential terminal supplying a power supply voltage.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Chang et al. and Mitzlaff into the method of Haas, Jr. et al. to include wherein the microstrip line is connected to the first wire and the second wire in parallel; and wherein the microstrip line is not connected to an equipotential terminal supplying a power supply voltage. The ordinary artisan would have been motivated to modify Haas, Jr. et al. in the above manner for the purpose of providing suitable connection of the microstrip line for forming parallel tank circuit and lowering insertion loss [column 6, lines 1-12 of Mitzlaff, paragraph [0012], [0016], [0058] of Chang et al.]. Further, it would have been obvious to try one of the known methods with a reasonable expectation of success. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art discloses similar materials, devices and methods.
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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893
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