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 Invention I and Species 1a, 2a, and 3a in the reply filed on February 5 2026 is acknowledged. The traversal is on the ground(s) that the Office has not met its burden in supporting the restriction requirement. This is not found persuasive because the Examiner detailed in the Restriction Requirement the reasons for restriction. Specifically, the Examiner asserted the following:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another and materially different method, such as using a selective deposition method for forming the encapsulant material, rather than an injection molding method as claimed in claims 14 and 15. Additionally, different fields of search would be required because the search for the product as claimed would not necessarily yield prior art applicable to the method as claimed, specifically the injection molding method as claimed.
Regarding the Species Election Requirement, the Examiner detailed the search burden if the requirement for election between species was not made, specifically that the characteristics are mutually exclusive, and that a search for one species within in a grouping of species would not necessarily yield prior art applicable to another species within the same grouping of species. For example, a search for a shield with a planar top surface and patterned bottom surface would not yield results applicable to a shield with a planar bottom surface and a patterned top surface.
Claims 5-6 and 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 5 2026. Claims 1-4 and 7-8 are examined.
The requirement is still deemed proper and is therefore made FINAL.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (“Kim” US 2019/0295859).
Regarding claim 1, Kim discloses a semiconductor device (Figures 7A-7D), comprising:
a substrate (11);
an electronic component (12) mounted on the substrate (11);
a first encapsulant (13) disposed on the substrate (11) and encapsulating the electronic component (12, see Figure 7A);
and a first electromagnetic interference (EMI) shielding layer (shield layer 69) disposed on the first encapsulant (13), wherein the first EMI shielding layer (69) comprises a first plurality of shield protrusions (“v groove”, see Figure 7C) each having one or more inclined sidewalls (see inclined walls of the protrusions of the uneven surface 25 of the shielding layer 69 in Figure 7C).
Regarding claim 2, Kim discloses wherein the one or more inclined sidewalls (see sidewalls of the v groove protrusions in Figure 7D) converge at a pointed tip (see pointed tip shape in Figure 7D).
Regarding claim 3, Kim discloses wherein at least one of the first plurality of shield protrusions (see v groove protrusions in Figure 7D) has a pyramidal shape (see at least para. [0061] and [0091], which disclose the pyramidal shape of the protrusions).
Regarding claim 4, Kim discloses wherein the first encapsulant (13) comprises a first plurality of encapsulant protrusions (see grooves of uneven surface 25) corresponding to the first plurality of shield protrusions (see the surface of the encapsulant 13 conforming to the surface of the shielding layer 69, thus the surfaces correspond to each other’s shapes), and the first EMI shielding layer (69) comprises a bottom surface conforming to the first plurality of encapsulant protrusions (see Figure 7D), and a top surface parallel to the bottom surface (here, parallel is interpreted to require that the surfaces have the same pattern, which is shown in Figure 7D).
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 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim as applied to claim 4 above, and further in view of Komatsu et al. (“Komatsu” US 2022/0122925).
Regarding claim 7, Kim does not disclose a second encapsulant and a second EMI shielding layer.
Komatsu discloses, however, a first EMI shielding layer (8a, curved portions of top surface of the encapsulant 6a) and a first encapsulant (6a),
a second encapsulant (17) disposed on the first EMI shielding layer (8a); and
a second EMI shielding layer (lateral portions of 8a, and 8b) disposed on the second encapsulant (17, see Figure 3) and electrically coupled to the first EMI shielding layer (top portions of 8a, electrical contact between 8a/8b is disclosed in para. [0039]).
It would have been obvious to one having ordinary skill in the art to incorporate the teachings of Komatsu into the teachings of Kim to include the second encapsulant and shielding layer as claimed. All of the claimed elements were known in the prior art and the combination of the teachings would yield in the predictable result to one having ordinary skill in the art of providing further physical and electrical protection to the semiconductor package. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Regarding claim 8, Komatsu discloses wherein the second EMI shielding layer (lateral portions of 8a, and 8b) has a planar top surface and a planar bottom surface (see Figure 4, which shows planar top surfaces of the lateral portions of shielding layer 8a, as well as planar bottom surfaces of both lateral portions of 8a and 8b).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Genevieve G Bullard-Connor whose telephone number is (571)270-0609. The examiner can normally be reached Mon-Fri, 9am-5pm.
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/Genevieve G Bullard-Connor/Examiner, Art Unit 2899
/DALE E PAGE/Supervisory Patent Examiner, Art Unit 2899