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
This action is responsive to application No. 18/405,721 filed on June 30, 2026.
Claim Objections
The applicant’s remarks in page 7 with respect to claim objections have been considered and found partially persuasive in terms of the lower limit of the range which falls under 10%, per the MPEP 2173.05, but not persuasive for the higher limit of the range, i.e. when greater than 10%, therefore, the claim objections are still valid, should delete ‘about or approximately’ to avoid indefiniteness.
Claims 5, 6, 19, 22, 25, 55, 56, 57 are objected to because of the following informalities: In the following, the claims should be recited to avoid indefiniteness in claim languages/phrases that would invoke 112 issues.
5. (Currently Amended) The semiconductor device package of claim 1, wherein a critical transformation temperature (CTT) of the SMM structure is
6. (Currently Amended) The semiconductor device package of claim 1, wherein a critical transformation temperature (CTT) of the SMM structure is in a range of
19. (Currently Amended) The semiconductor device package of claim 17, wherein the ternary element comprises palladium, and wherein the ternary nitinol alloy comprises a range of about 5% palladium to
22. (Currently Amended) The semiconductor device package of claim 17, wherein the ternary element comprises platinum, and wherein the ternary nitinol alloy comprises a range of about 5% platinum to
25. (Currently Amended) The semiconductor device package of claim 17, wherein the ternary element comprises gold, and wherein the ternary nitinol alloy comprises a range of about 5% gold to
55. (Currently Amended) The semiconductor device of claim 44, wherein the ternary nitinol alloy comprises a range of about 5% ternary element to
56. (Currently Amended) The semiconductor device of claim 44, wherein the ternary nitinol alloy comprises a range of
57. (Currently Amended) The semiconductor device of claim 44, wherein the ternary nitinol alloy comprises a range of
Appropriate corrections are required.
Claim Rejections - 35 USC § 102
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
5. 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.
6. Claims 1-2, 5-6, 8 are rejected under 35 U.S.C. 102(a)(1)/ (a)(2) as¶ being anticipated by Nagai (US 2008/0006914 A1).
Regarding independent claim 1, Nagai teaches a semiconductor device package, comprising (Fig. 4 or 6):
a submount (3 base, para [0059]); and
one or more semiconductor die (5 IC chip, para [0059]) on the submount (3), the one or more semiconductor die (5) comprising one or more metallization layers (11 SMA, para [0059]), the one or more metallization layers (11) comprising a shape-memory metallization (SMM) structure (11, shape-memory alloy/SMA, see para [0059]).
Regarding claim 2, Nagai teaches wherein (Fig. 6), further comprising an encapsulating portion (7 package resin, para [0053]), wherein the encapsulating portion (7) directly contacts the SMM structure (side wall of 11 SMA).
Regarding claim 5, Nagai teaches wherein (Fig. 4), a critical transformation temperature (CTT) (85°C to about 100°C, para [0063]) of the SMM structure (11) is approximately equivalent to a thermal cycling temperature of the semiconductor device package (para [0064] when the temperature rises to about 85.degree. C. to about 100.degree. C. at the point of use, and thermal stress is generated in the package resin 7, this thermal stress is cancelled by a restoration force of the metal plate 11a).
Regarding claim 6, Nagai teaches wherein (Fig. 6), a critical transformation temperature (CTT) of the SMM structure (11) is in a range of about 100°C to about 300°C (240°C. to about 270°C, para [0059]).
Regarding claim 8, Nagai teaches wherein (Fig. 6), the one or more metallization layers (11/11a, para [0063]) comprise a plurality of metallization layers (11, 11a), and wherein one each of the plurality of metallization layers is an SMM layer comprising the SMM structure (SMA).
7. Claims 41, 67 are rejected under 35 U.S.C. 102(a)(1)/ (a)(2) as¶ being anticipated by Sun et al. (US 2009/0085228 A1).
Regarding independent claim 41, Sun et al. teaches a semiconductor device package, comprising (Fig. 6):
a semiconductor die (120, para [0012]); and
a shape-memory metallization (SMM) structure (20, shape-memory alloy/SMA, see para [0012], [0014]) on the semiconductor die (120), the SMM structure (20 SMA) is one or more of a contact, an interconnect (see claims 2-3, can act as interconnect film), or a bonding pad for the semiconductor device (120) (this limitation is an intended use).
Regarding claim 67, Sun et al. teaches wherein (Fig. 8), the SMM structure comprises one or more of a silver-cadmium alloy, a gold-cadmium alloy, a copper-aluminum-nickel alloy (para [0013]), a copper-tin alloy, a copper-zinc alloy, a copper-zinc-silicon alloy, a copper-zinc-tin alloy, a copper-zinc-aluminum alloy, an indium-titanium alloy, a nickel-aluminum alloy, an iron-platinum alloy, a manganese-copper alloy, an iron-manganese alloy, or an iron-manganese-silicon alloy.
Claim Rejections - 35 USC § 103
8. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
9. 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.
10. 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.
11. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or non-obviousness.
12. Claims 17, 19, 22, 25 are rejected under 35 U.S.C. 103 as being unpatentable over Nagai (US 2008/0006914 A1) as applied to claim 1 above, and further in view of Perevalov et al. (US 2019/0086347 A1).
Regarding claim 17, Nagai teaches all of the limitations of claim 1 from which this claim depends.
Nagai teaches wherein (para [0089]), the SMM structure comprises a nitinol alloy (nickel-titanium Ti-Ni, para [0089]).
Nagai is silent to explicitly disclose wherein, the nitinol alloy is a ternary nitinol alloy comprising nickel, titanium, and a ternary element.
Perevalov et al. teaches wherein (para [0125]), the nitinol alloy is a ternary nitinol alloy comprising nickel, titanium, and a ternary element (nickel-titanium, and additional element (copper, para [0125] considering as the ternary element).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Perevalov et al. and modify the nitinol alloy with additional material of Sun et al., in order to undergo a reversible transformation from an Austenite to a Martensite with a change in temperature such that an article made from such alloy has a heat stable configuration and is capable of being deformed to a heat unstable position (para [0124]).
Regarding claim 19, Nagai and Perevalov et al. teach all of the limitations of claim 17 from which this claim depends.
Perevalov et al. teaches wherein (para [0125]), the ternary element comprises palladium (Pd, para [0125]), the ternary nitinol alloy (NiTi-Pd) comprises a certain percentage of palladium/Pd (out of 100) as the ternary element in the ternary nitinol alloy.
However, Perevalov et al. is explicitly silent of disclosing wherein the ternary nitinol alloy comprises a range of about 5% palladium to about 30% palladium.
It would have been obvious to select intended ‘percentage of palladium in the ternary nitinol alloy’ so that the palladium percentage to be within the quoted range, to obtain heat stable configuration and is capable of being deformed to a heat unstable position. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the specification contains no disclosure of either the critical nature of the claimed percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen percentage or upon another variable recited in a claim, the Applicant must show that the chosen percentage is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 22, Nagai and Perevalov et al. teach all of the limitations of claim 17 from which this claim depends.
Perevalov et al. teaches wherein (para [0125]), the ternary element comprises platinum (Pt, para [0125]), the ternary nitinol alloy (NiTi-Pt) comprises a certain percentage of platinum /Pt (out of 100) as the ternary element in the ternary nitinol alloy.
However, Perevalov et al. is explicitly silent of disclosing wherein the ternary nitinol alloy comprises a range of about 5% platinum to about 30% platinum.
It would have been obvious to select intended ‘percentage of platinum in the ternary nitinol alloy’ so that the platinum percentage to be within the quoted range, to obtain heat stable configuration and is capable of being deformed to a heat unstable position. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the specification contains no disclosure of either the critical nature of the claimed percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen percentage or upon another variable recited in a claim, the Applicant must show that the chosen percentage is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 25, Nagai and Perevalov et al. teach all of the limitations of claim 17 from which this claim depends.
Perevalov et al. teaches wherein (para [0125]), the ternary element comprises gold (Au, para [0125]), the ternary nitinol alloy (NiTi-Au) comprises a certain percentage of gold/Au (out of 100) as the ternary element in the ternary nitinol alloy.
However, Perevalov et al. is explicitly silent of disclosing wherein the ternary nitinol alloy comprises a range of about 5% gold to about 30% gold.
It would have been obvious to select intended ‘percentage of gold in the ternary nitinol alloy’ so that the gold percentage to be within the quoted range, to obtain heat stable configuration and is capable of being deformed to a heat unstable position. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the specification contains no disclosure of either the critical nature of the claimed percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen percentage or upon another variable recited in a claim, the Applicant must show that the chosen percentage is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
13. Claims 44, 55-57 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2009/0085228 A1) as applied to claim 41 above, and further in view of Perevalov et al. (US 2019/0086347 A1).
Regarding claim 44, Sun et al. teaches all of the limitations of claim 41 from which this claim depends.
Sun et al. teaches wherein (Fig. 6), the SMM structure (20 SMA) comprises a nitinol alloy (nickel-titanium alloys, para [0014]).
Sun et al. is silent to explicitly disclose wherein, the nitinol alloy is a ternary nitinol alloy comprising nickel, titanium, and a ternary element.
Perevalov et al. teaches wherein (para [0125]), the nitinol alloy is a ternary nitinol alloy comprising nickel, titanium, and a ternary element (nickel-titanium, and additional element (copper, para [0125] considering as the ternary element).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Perevalov et al. and modify the nitinol alloy with additional material of Sun et al., in order to undergo a reversible transformation from an Austenite to a Martensite with a change in temperature such that an article made from such alloy has a heat stable configuration and is capable of being deformed to a heat unstable position (para [0124]).
Regarding claim 55, Sun et al. and Perevalov et al. teach all of the limitations of claim 44 from which this claim depends.
Perevalov et al. teaches wherein (Fig. 1), the ternary nitinol alloy (NiTi-Cu) comprises a certain percentage of copper/Cu (out of 100) as the ternary element in the ternary nitinol alloy.
However, Perevalov et al. is explicitly silent of disclosing wherein the ternary nitinol alloy comprises a range of about 5% ternary element to about 30% ternary element.
It would have been obvious to select intended ‘percentage of copper in the ternary nitinol alloy’ so that the copper percentage to be within the quoted range, to obtain heat stable configuration and is capable of being deformed to a heat unstable position. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the specification contains no disclosure of either the critical nature of the claimed percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen percentage or upon another variable recited in a claim, the Applicant must show that the chosen percentage is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 56, Sun et al. and Perevalov et al. teach all of the limitations of claim 44 from which this claim depends.
Perevalov et al. teaches wherein (Fig. 1), the ternary nitinol alloy (NiTi-Cu) comprises a certain percentage (out of 100) of titanium/Ti in the ternary nitinol alloy.
However, Perevalov et al. is explicitly silent of disclosing wherein the ternary nitinol alloy comprises a range of about 49% titanium to about 52% titanium.
It would have been obvious to select intended ‘percentage of titanium in the ternary nitinol alloy’ so that the titanium percentage to be within the quoted range, to obtain heat stable configuration and is capable of being deformed to a heat unstable position. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the specification contains no disclosure of either the critical nature of the claimed percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen percentage or upon another variable recited in a claim, the Applicant must show that the chosen percentage is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 57, Sun et al. and Perevalov et al. teach all of the limitations of claim 44 from which this claim depends.
Perevalov et al. teaches wherein (Fig. 1), the ternary nitinol alloy (NiTi-Cu) comprises a certain percentage (out of 100) of nickel/Ni in the ternary nitinol alloy.
However, Perevalov et al. is explicitly silent of disclosing wherein the ternary nitinol alloy comprises a range of about 18% nickel to about 46% nickel.
It would have been obvious to select intended ‘percentage of nickel in the ternary nitinol alloy’ so that the titanium percentage to be within the quoted range, to obtain heat stable configuration and is capable of being deformed to a heat unstable position. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955). Furthermore, the specification contains no disclosure of either the critical nature of the claimed percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen percentage or upon another variable recited in a claim, the Applicant must show that the chosen percentage is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
14. Claims 63-64 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2009/0085228 A1) as applied to claim 41 above, and further in view of Li et al. (US 2022/0384307 A1).
Regarding claim 63, Sun et al. teaches all of the limitations of claim 41 from which this claim depends.
Sun et al. is explicitly silent of disclosing wherein, the semiconductor die comprises a wide bandgap semiconductor.
Li et al. teaches wherein (Fig. 3), the semiconductor die (334, para [0044]) comprises a wide bandgap semiconductor (HEMT, para [0044] which is a wide bandgap transistor).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Sun et al. and substitute the device of Sun et al., in order to apply implementations that utilize bipolar junction transistors (BJT) devices or other suitable types of transistors (para [0044]).
Regarding claim 64, Sun et al. teaches all of the limitations of claim 41 from which this claim depends.
Sun et al. is explicitly silent of disclosing wherein, the semiconductor die comprises one or more silicon carbide-based metal-oxide-semiconductor field-effect transistors (MOSFETs), one or more silicon carbide-based Schottky diodes, or one or more Group-III nitride-based high electron mobility transistor (HEMT) devices.
Li et al. teaches wherein (Fig. 3), the semiconductor die comprises one or more silicon carbide-based metal-oxide-semiconductor field-effect transistors (MOSFETs), one or more silicon carbide-based Schottky diodes, or one or more Group-III nitride-based high electron mobility transistor (HEMT) (para [0044]) devices.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Sun et al. and substitute the device of Sun et al., in order to apply implementations that utilize bipolar junction transistors (BJT) devices or other suitable types of transistors (para [0044]).
Allowable Subject Matter
15. Claim 94 is allowed.
16. The following is an examiner’s statement of reasons for allowance:
Claim 94: the prior art of record alone or in combination neither teaches nor makes obvious a method, comprising:
….
further comprising:
depositing a passivation layer on the semiconductor die;
opening the passivation layer to expose the SMM structure;
bonding one or more electrical connection structures to the SMM structure;
attaching an assembly comprising the semiconductor die and the SMM structure to a lead frame; and
encapsulating the assembly”.
The prior arts, Sun et al. (US 2009/0085228 A1) and/or Nagai (US 2008/0006914 A1) do not disclose forming or processing steps of the SMM structure. Therefore, by itself or in combination or with other prior arts does not disclose the quoted limitation as stated in section 16.
Response to Arguments
17. It has been acknowledged that the applicant has amended claims 41, 94, and cancelled claims 42, 95, per the response dated on 06/30/2026.
Applicant’s remarks in pages 8-11 have been considered, but they are not found persuasive, because the semiconductor die 5 comprises metallization layer 11, shape memory alloy (SMA, a similar material of SMM) which is thermally transformative and bonds the set of interconnects to the substrate. The applicant also argued on adhesive which is used to attach the semiconductor die 5 to base 3. This is to remind that the claims are related to device structure and have been rejected based on how they were constructed. Therefore, it is suggested to amend the languages of the claim(s) structurally, and/or to clarify the claim limitations that would differentiate the instant invention from the cited prior arts.
Conclusion
18. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIDARUL MAZUMDER whose telephone number is (571)272-8823. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
20. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Partridge can be reached at 571-270-1402. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIDARUL A MAZUMDER/Primary Examiner, Art Unit 2812
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