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 .
DETAILED ACTION
Election/Restrictions
1. Applicant's election, without traverse, of claims 1, 3, and 5-9 in the “Response to Restriction Requirement” filed on 10/02/2025 is acknowledged and entered by the Examiner.
This office action consider claims 1-10 pending for prosecution, wherein claims 2, 4, and 10 are withdrawn from further consideration, and claims 1, 3, and 5-9 are presented for examination.
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)(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
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (114; Fig 6; [0092]) = (element 114; Figure No. 6; Paragraph No. [0092]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
2. Claims 1 and 6-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sugimoto (US 20240055450 A1; hereinafter Sugimoto, using foreign priority date 02/17/2021, a machine translation is attached).
Regarding claim 1, Sugimoto teaches an image pickup unit (see the entire document, specifically Fig. 1A+; [0022+], and as cited below), comprising:
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a three-dimensional substrate ({10, 20}; Figs. 7A-7C; see [0052-0053] in view of [0039]; see also [0035] of the “Specification” of the instant invention where it states that “the three-dimensional substrate 42 is an MID (molded interconnect device) of a resin molded component in which wiring, electrodes, and so forth are formed”) which includes a recess portion (see Fig. 7B; see [0053]); and
an image pickup module (30; Figs. 7A-7C in view of Figs 5A-5B; see [0053-0054] in view of [0043-0045]; where semiconductor element 30 is an imaging element, that is, in a case where the semiconductor device is an imaging device) which is installed in the recess portion (see Figs. 7A-7C in view of Figs 5A-5B; see [0053-0054] in view of [0043-0045]),
wherein the recess portion (see Annotated Figs. 7B-7C; see [0052-0053]) includes a first recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as First Recess Portion), a second recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as Second Recess Portion) which communicates with the first recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as First Recess Portion) and which has a wider opening and a shallower depth than (see Annotated Figs. 7B-7C) the first recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as First Recess Portion), and a third recess portion (24; see Annotated Figs. 7B-7C; see [0052-0053]; labeled as Third Recess Portion) which is formed by providing a notch from a bottom surface of the second recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as Second Recess Portion) in a depth direction of the first recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as First Recess Portion).
Regarding claim 6, Sugimoto teaches all of the features of claim 1.
Sugimoto further teaches wherein an observation window of the image pickup module (30; Figs. 7A-7C in view of Figs 5A-5B; see [0053-0054] in view of [0043-0045]; where semiconductor element 30 is an imaging element, that is, in a case where the semiconductor device is an imaging device) is positioned on a surface side of the three-dimensional substrate ({10, 20}; Figs. 7A-7C; see [0052-0053] in view of [0039]; see also [0035]) relative to the bottom surface of the second recess portion (see Annotated Figs. 7B-7C; see [0052-0053]; labeled as Second Recess Portion).
Regarding claim 7, Sugimoto teaches all of the features of claim 1.
Sugimoto further teaches wherein the bottom surface (bottom surface of Second Recess Portion; see Annotated Figs. 7B-7C ) is formed into a flat surface in a rectangular belt shape.
Regarding claim 8, Sugimoto teaches all of the features of claim 7.
Sugimoto further teaches wherein the three-dimensional substrate ({10, 20}; Figs. 7A-7C; see [0052-0053] in view of [0039]; see also [0035] of the “Specification” of the instant invention where it states that “the three-dimensional substrate 42 is an MID (molded interconnect device) of a resin molded component in which wiring, electrodes, and so forth are formed”) includes an edge side portion ({20}; Figs. 7A-7C; see [0052-0053] in view of [0039]), and the bottom surface (bottom surface of Second Recess Portion; see Annotated Figs. 7B-7C ) is provided along the edge side portion ({20}; Figs. 7A-7C; see [0052-0053] in view of [0039]).
Regarding claim 9, Sugimoto teaches all of the features of claim 8.
Sugimoto further teaches wherein the three-dimensional substrate ({10, 20}; Figs. 7A-7C; see [0052-0053] in view of [0039]; see also [0035] of the “Specification” of the instant invention where it states that “the three-dimensional substrate 42 is an MID (molded interconnect device) of a resin molded component in which wiring, electrodes, and so forth are formed”) includes the edge side portion ({20}; Figs. 7A-7C; see [0052-0053] in view of [0039]), the number of which is four (in view of Figs. 7A-7C; see [0052-0053]), and the bottom surface (bottom surface of Second Recess Portion; see Annotated Figs. 7B-7C ), the number of which is four (in view of Figs. 7A-7C; see [0052-0053]), and the four bottom surfaces (in view of Figs. 7A-7C; see [0052-0053]) are coupled in a frame shape (in view of Figs. 7A-7C; see [0052-0053]).
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis `(; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
3. Claims 3 and 5 are rejected under 35 U.S.C.103 as being unpatentable over Sugimoto (US 20240055450 A1; hereinafter Sugimoto, using foreign priority date 02/17/2021, a machine translation is attached).
Regarding claim 3, Sugimoto teaches all of the features of claim 1.
Sugimoto further teaches wherein the third recess portion (24; see Annotated Figs. 7B-7C; see [0052-0053]; labeled as Third Recess Portion) has a dimension in which a resin application nozzle (see [0044]; dispenser) (see below for “is inserted”).
It is the Examiner’s position that the limitation of "wherein the third recess portion has a dimension in which a resin application nozzle is inserted” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Sugimoto has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. 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).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Sugimoto teaches the structure of claims 1 and 3 as detailed above. Thus, Sugimoto teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
In reference to the language in claim 3 referring to “wherein the third recess portion has a dimension in which a resin application nozzle is inserted”, it is important to note that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Accordingly, the limitation "the display module is configured to be torn along the dotted area when a force is applied thereto" is not patentable over prior art as the structure of the prior art cannot be differentiate from the structural limitation as claimed.
Therefore, in reference to the language in claim 3 referring to wherein the third recess portion has a dimension in which a resin application nozzle is inserted, it is noted that Sugimoto teaches all the structural elements in claims 1 and 3 according to the instant invention and that the third recess portion has a dimension in which a resin application nozzle is inserted process does not affect the structure of the final device.
Regarding claim 5, Sugimoto teaches all of the features of claim 3.
Sugimoto further teaches wherein the third recess portion (24; see Annotated Figs. 7B-7C; see [0052-0053]; labeled as Third Recess Portion) in plurality is provided in symmetrical positions with respect to the image pickup module (30; Figs. 7A-7C in view of Figs 5A-5B; see [0053-0054] in view of [0043-0045]; where semiconductor element 30 is an imaging element, that is, in a case where the semiconductor device is an imaging device).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Omar Mojaddedi whose telephone number is 313-446-6582. The examiner can normally be reached on Monday – Friday, 8:00 a.m. to 4:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julio J. Maldonado, can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898