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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “non-contact surface” or “second average thickness is less than 80 percent” as recited in claim 21 do not have support in the specification as originally filed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. It is not clear what the limitation “non-contact” surface mean. Is claim intended to state there is no contact be made to the second surface whether the contact is electrical or physical? Furthermore, it is not clear what the limitation “ second average is less than 80 percent of the second average thickness” is meant to state.
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(s) 1-5, 7, and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kubara et al., US 2002/0053721.
Regarding claim 1, Kubara discloses (fig. 3 and related text) a semiconductor package, comprising: a semiconductor component (9); a plurality of leads (2) electrically connected to the semiconductor component (via 10); an encapsulation material (10) contacting the semiconductor component (9) and the leads (2), wherein the leads extend through the encapsulation material (11) to an exterior of the semiconductor package (fig. 3), each of the leads (2) having a first surface and a second surface opposite from the first surface (fig. 3); and a solderable metal on the leads (7).
Kubara does not explicitly disclose the solderable metal having a first average thickness on the first surfaces and having a second average thickness on the second surfaces, wherein the second average thickness is 10 percent to 80 percent of the first average thickness.
Parameters such as average thickness in the art of semiconductor process are subject to routine experimentation and optimization to achieve the desired device characterization during fabrication.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an appropriate average thickness to meet the requirements of the particular design, 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. /n re Aller, 105 USPQ 233.
Regarding claim 2, Kubara as modified discloses the solderable metal primarily includes a metal selected from the group consisting of tin, silver, and an alloy thereof [0077].
Regarding claim 3, Kubara as modified discloses wherein the solderable metal primarily includes tin ([0077]).
Regarding claim 4, Kubara does not explicitly disclose the first average thickness of the solderable metal is 5 microns to 20 microns.
Parameters such as average thickness in the art of semiconductor process are subject to routine experimentation and optimization to achieve the desired device characterization during fabrication.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an appropriate average thickness to meet the requirements of the particular design, 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. /n re Aller, 105 USPQ 233.
Regarding claim 5, Kubara as modified discloses the leads (2) have a gull wing configuration (fig. 3).
Regarding claim 7, Kubara as modified discloses the solderable metal (7) exposes a portion of the leads (2) adjacent to the semiconductor component (9, fig. 3).
Regarding claim 21, as best the examiner is able to ascertain the claimed invention, Kubara discloses (fig. 3 and related text) a semiconductor package, comprising: a semiconductor component (9); a plurality of leads (2) electrically connected to the semiconductor component (via 10); an encapsulation material (10) contacting the semiconductor component (9) and the leads (2), wherein the leads extend through the encapsulation material (11) to an exterior of the semiconductor package (fig. 3), each of the leads (2) having a contact first surface (bottom surface of 2) and a non-contact second surface (top surface of 2) opposite from the first surface (fig. 3); and a solderable metal on the leads (7).
Kubara does not explicitly disclose the solderable metal having a first average thickness on the non-contact surfaces and having a second average thickness on thenon-contact second surfaces, wherein the second average thickness less than 80 percent of the first average thickness.
Parameters such as average thickness in the art of semiconductor process are subject to routine experimentation and optimization to achieve the desired device characterization during fabrication.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an appropriate average thickness to meet the requirements of the particular design, 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. /n re Aller, 105 USPQ 233.
Regarding claim 22, Kubara as modified discloses wherein the solderable metal primarily includes tin ([0077]).
Regarding claim 23, Kubara does not explicitly disclose the first average thickness of the solderable metal is 5 microns to 20 microns.
Parameters such as average thickness in the art of semiconductor process are subject to routine experimentation and optimization to achieve the desired device characterization during fabrication.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an appropriate average thickness to meet the requirements of the particular design, 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. /n re Aller, 105 USPQ 233.
Regarding claim 24, Kubara discloses (fig. 3 and related text) a semiconductor package, comprising: a semiconductor component (9); a plurality of leads (2) electrically connected to the semiconductor component (via 10); an encapsulation material (10) contacting the semiconductor component (9) and the leads (2), wherein the leads extend through the encapsulation material (11) to an exterior of the semiconductor package (fig. 3), each of the leads (2) having a first surface and a second surface opposite from the first surface (fig. 3); and a solderable metal on the leads (7).
Kubara does not explicitly disclose the solderable metal having a first average thickness on the first surfaces and having a second average thickness on the second surfaces, wherein the second average thickness is less than the first average thickness.
Parameters such as average thickness in the art of semiconductor process are subject to routine experimentation and optimization to achieve the desired device characterization during fabrication.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an appropriate average thickness to meet the requirements of the particular design, 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. /n re Aller, 105 USPQ 233.
Regarding claim 25, Kubara as modified discloses wherein the solderable metal primarily includes tin ([0077]).
Regarding claim 26, Kubara does not explicitly disclose the first average thickness of the solderable metal is 5 microns to 20 microns.
Parameters such as average thickness in the art of semiconductor process are subject to routine experimentation and optimization to achieve the desired device characterization during fabrication.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize an appropriate average thickness to meet the requirements of the particular design, 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. /n re Aller, 105 USPQ 233.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kubara in view of Harden et al., US 2003/0062601.
Regarding claim 6, Kubara as modified does not disclose the leads have a j-lead configuration.
Harden discloses a j-lead configuration(fig. 6A and related text) in order to allow maximum space efficiency to the package [0174].
Kubara and Harden are analogous art because they both are directed to semiconductor package with leadframe and one of ordinary skill in the art would have had a reasonable expectation of success to modify Chen with the specified features of Lee because they are from the same field of endeavor.
It would have been obvious to one of ordinary skill in the art, on the effective filing date of the claimed invention, to modify Kubara to include the j-lead configuration as taught by Harden to allow maximum space efficiency to the package [0174].
Response to Arguments
Applicant's arguments filed 07/08/2026 have been fully considered but they are not persuasive. In response to applicant's argument that the Kubra references fail to show how to plate surfaces on the lead frame 5 and/or outer lead parts t at different thicknesses, on surface from the other, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding applicant’s argument the examiner’s determination is supposition not supported by face which is little more than improper hindsight reconsideration must be withdrawn. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916) (a patent based on a change in the proportions of a prior product or process (changing from 4-10% oil to 1% oil) must be confined to the proportions that were shown to be critical (1%)); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205 (CCPA 1946) ("Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies."); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933) ("It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675, 12 USPQ 430 (CCPA 1932) ("Changes in proportions of agents used in combinations . . . in order to be patentable, must be critical as compared with the proportions of the prior processes."); E.I. DuPont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006, 128 USPQ2d 1193, 1201 (Fed. Cir. 2018.)("[A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." (citing Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) ("A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent.").
Conclusion
THIS ACTION IS MADE FINAL. Applicants are 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL A GEBREMARIAM whose telephone number is (571)272-1653. The examiner can normally be reached 8:30-4PM.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynne Gurley can be reached at 571-272-1670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL A GEBREMARIAM/Primary Examiner, Art Unit 2811
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