DETAILED ACTION
Election/Restriction
1. Applicant’s election with traverse of Group II, claims 8 - 16 is acknowledge. The traversal is on the ground(s) that “the Examiner is requested to reconsider the requirement, because the alleged "different field of search" that might be required for the inventions do not appear to be seriously burdensome, especially in view of the fact that the Inventions I and II are deemed closely classified as indicated above if not in the same class/subclass, and hence, could be covered in a single search without serious burden on the Examiner”. These are not found persuasive because referring to the restriction requirement set forth in the Office Action, it clearly shows that the alternative method proposed by the examiner would be distinct from the process claimed. Applicant did not show the alternate method was incorrect. Additionally, the fields of search for method and device claims are NOT coextensive and the determinations of patentability of method and device claims are different, that is process limitations and device limitations are given weight differently in determining the patentability of the claimed inventions. Also, the strategies for doing text searching of the device claims and method claims are different. Thus, separate searches are required. Furthermore, Applicant has not provided a convincing argument that the materially different processes would not be suitable in producing the claimed device. Therefore, it is clear that the examination of the device and method would be an undue burden, and the election requirement is made final.
Specification
2. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 102
3. 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.
4. Claim(s) 8, 11 - 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SHIMAMURA et al. (20130271928).
With regard to claim 8, SHIMAMURA et al. disclose a method for manufacturing an electronic device (for example, see figs. 5(A), 5(B), 5(C)) wherein the method comprises:
providing a substrate (2) with at least one electronic component (31 or 32) and at least one metal bar (4; for example, see paragraph [0097]) mounted thereon;
forming an encapsulant layer (5) on the substrate (2) to encapsulate the at least one electronic component (31 or 32) and the at least one metal bar (4) and expose (exposed from the encapsulant layer 5) a top surface of each of the at least one metal bar (4);
forming at least one trench (concave part 52, fig. 5(B) functions as one trench) adjacent to and around the at least one metal bar (4), respectively, to expose an upper portion of a lateral surface (side surface) of each of the at least one metal bar (4) from the encapsulant layer (5); and
forming a shielding layer (6) over the encapsulant layer (5) and the at least one metal bar (4), wherein the shielding layer (6) is in contact with the at least one metal bar (4).
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With regard to claim 11, SHIMAMURA et al. disclose forming the at least one trench (52) comprises: forming the at least one trench using laser ablation (for example, see paragraph [0082]).
With regard to claim 12, SHIMAMURA et al. disclose each of the at least one trench (52) comprises a sloping surface that slopes towards the metal bar (4, fig. 5(B)).
With regard to claim 13, SHIMAMURA et al. disclose the substrate (2) comprises a ground layer (a terminal layer 23a1, electrically connected to the ground potential, functions as a ground layer; for example, see paragraph [0103]), and each of the at least one metal bar (4) is electrically coupled to the ground layer (23a1).
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 14, 15 are rejected under 35 U.S.C. 103 as being unpatentable over SHIMAMURA et al. (20130271928) in view of Rofougaran et al. (8811923).
With regard to claims 14, 15, SHIMAMURA et al. do not clearly disclose the at least one electronic component comprises a wireless communication module; wherein the wireless communication module comprises a voltage-controlled oscillator circuit.
However, Rofougaran et al. discloses the at least one electronic component (150) is a wireless communication module; wherein the wireless communication module (150) comprises a voltage-controlled oscillator circuit (165).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the SHIMAMURA et al.’s device to have the at least one electronic component comprises a wireless communication module; wherein the wireless communication module comprises a voltage-controlled oscillator circuit as taught by Rofougaran et al. in order to generate a clock signal efficiency for use by various circuitry for enhancing a stability operation of the semiconductor device, as is known to one of ordinary skill in the art.
7. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over SHIMAMURA et al. (20130271928) in view of Kim et al. (12293989).
With regard to claim 16, SHIMAMURA et al. do not clearly disclose the at least one metal bar is higher than the at least one electronic component.
However, Rofougaran et al. discloses the at least one metal bar (metal material 320 functions as the at least one metal bar; for example, see column 6, lines 60, 61) is higher than the at least one electronic component (220).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the SHIMAMURA et al.’s device to have the at least one metal bar is higher than the at least one electronic component as taught by Kim et al. in order to secure electrical connection efficiency for enhancing a stability operation of the semiconductor device, as is known to one of ordinary skill in the art.
Allowable Subject Matter
8. Claims 9, 10 are 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.
Claims 9, 10 are allowable over the prior art of record, because none of these references disclose or can be combined to yield the claimed invention such as forming the encapsulant layer on the substrate comprises: attaching a film on the top surface of each of the at least one metal bar or on a mold chase; placing the mold chase over the substrate to form a molding chamber between the mold chase and the substrate, wherein the mold chase comprises at least one cavity accommodating the at least one metal bar, respectively, and the film is between the mold chase and the top surface of each of the at least one metal bar; injecting into the molding chamber an encapsulant material; solidifying the encapsulant material; and detaching the films from the at least one metal bar to expose the respective top surface of the at least one metal bar as recited in claim as recited in claim 9.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAN N TRAN whose telephone number is (571) 272 - 1923. The examiner can normally be reached on 8:30-5:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davienne Monbleau can be reached on (571) 272-1945. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAN N TRAN/
Primary Examiner, Art Unit 2812
Prosecution Insights