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
Status of the Claims
Applicant’s election, with traverse, of Group I, claims 1-11, in the reply filed on May 27th, 2026, is acknowledged. The traversal is on the ground(s) that “the search and examination of Groups I and II would be likely to be co-extensive and, in any event, would involve such interrelated art that the search and examination can be made without undue burden on the Examiner”. This is not found persuasive. The restriction for examination purposes as indicated in the restriction /election requirement, mailed on 03/27/2026, is proper because all these inventions listed in this action are independent or distinct for the reasons given and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
Non-elected invention of Group II, claims 12-19 have been withdrawn from consideration. Claims 1-19 are pending.
Action on merits of Group I, claims 1-11 as follows.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Drawings
The drawings filed on 02/13/2024 are acceptable.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
. Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.Claim 10 recites: " A semiconductor package comprising a leadframe according to claim 1".The intended use of the lead frame of claim 1 in a semiconductor package fails to further limit the device of claim 1.
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.
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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Ono (JPS 5492178, hereinafter as Ono ‘178).
Regarding Claim 1, Ono ‘178 teaches a leadframe for a semiconductor package, comprising:
one or more mechanical standoffs (or protrusion, Fig. 6, (3); [0002]) to place a die (4; [0002]) at a distance from the leadframe (1; [0002]) that is defined by a height of the standoffs and to enable an adhesive layer (solder layer (5); [0002]) between the leadframe (1) and the die (4) to bond the die (4) to the leadframe (1), wherein the leadframe (1) has a planar surface, wherein the standoffs protrude (3) from the planar surface, wherein the leadframe (1) comprises a surrounding perimeter having a height of zero or larger and that is lower than the standoffs (3), wherein the leadframe (1) and the standoffs (3) are a one-piece of conducting material, and wherein the leadframe (1) including the standoffs (3) forms a die paddle (see Fig. 6).
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Fig. 6 (Ono ‘178)
Regarding Claim 2, Ono ‘178 teaches the conducting material is copper (see para. [0002]).
Regarding Claim 3, Ono ‘178 teaches the standoffs (3) are created from the one-piece of conducting material using at least one process selected from the group consisting of: a stamping process (coining process; [0002]); and wherein the surrounding perimeter of the leadframe (1) is lower than the standoffs (3) (see Fig. 6).
Product by process limitation:
The expression “an etching process, and a laser ablation process” is/are taken to be a product by process limitation and is given no patentable weight. A product by process claim directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See In re Fessman, 180 USPQ 324, 326 (CCPA 1974); In re Marosi et al., 218 USPQ 289, 292 (Fed. Cir. 1983); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935); and particularly In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process steps, which must be determined in a “product by process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old and obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not.
Regarding Claim 5, Ono ‘178 teaches the standoffs (3) are geometrically shaped as at least one shape selected from the group consisting of: a cylindrical shape (see Fig. 3).
Regarding Claim 6, Ono ‘178 teaches the height of each of the standoffs (3) is substantially the same, enabling the adhesive layer (5) to have a substantially uniform bond line thickness (BLT) (see Fig. 6).
Regarding Claim 7, Ono ‘178 teaches the leadframe (1) including the standoffs (3) forms a high-side (HS) die paddle (see Fig. 4).
Regarding Claim 8, Ono ‘178 teaches the leadframe (1) comprises three standoffs (3) (see Fig. 4).
Regarding Claim 9, Ono ‘178 teaches the standoffs (3) are part of either a top die paddle or a bottom die paddle (see Fig. 4).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ono ‘178 as applied to claim 1 above.
Regarding Claim 4, Ono ‘178 teaches the standoffs are created by a process having a minimum resolution of 10 µm to 30 µm (see para. [0002]).
Thus, Ono ‘178 is shown to teach all the features of the claim with the exception of explicitly the limitations: “the standoffs are created by a process having a minimum resolution of 5 µm”
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a minimum resolution of 5 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). That range can be disclosed in multiple prior art references instead of in a single prior art reference. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). The claim would have been obvious in the absence of a showing that the claimed range(s) achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill of art) and In re Aller, 105 USPQ 233 (CCPA 1955) (selection of optimum ranges within prior art general conditions is obvious).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ono ‘178 as applied to claim 1 above, and further in view of Trasporto (US 2007/0176271, hereinafter as Tras ‘271).
Regarding Claim 10, Ono ‘178 is shown to teach all the features of the claim with the exception of explicitly the limitations: “a semiconductor package”.
Tras ‘271 teaches a semiconductor package (see para. [0049]).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Ono ‘178 by having a semiconductor package for the purpose of providing an integrated circuit package system (see para. [0020]) as suggested by Tras ‘271.
Regarding Claim 11, Ono ‘178 teaches a metal–oxide–semiconductor field-effect transistor (MOSFET) die (or power transistor; [see para. [0002]), wherein the MOSFET die is bonded to the leadframe via an adhesive layer between the leadframe and the MOSFET die.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to further show the state of the art with respect to semiconductor devices:
Dimaano et al. (US 2007/0075404 A1)
Islam et al. (US 2006/0151860 A1)
Kimura (US 2004/0099933 A1)
For applicant’s benefit portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection it is noted that the PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS. See MPEP 2141.02 VI.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DZUNG T TRAN whose telephone number is (571) 270-3911. The examiner can normally be reached on M-F 8 AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Purvis can be reached on (571) 272-1236. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DZUNG TRAN/
Primary Examiner, Art Unit 2893
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