DETAILED ACTION
This action is responsive to the application No. 18/470,409 filed on September 19, 2023.
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 .
Acknowledgment
The amendment filed on 04/12/2026 responding to the Office action mailed on 01/16/2026, has been entered. The present Office action is made with all the suggested amendments being fully considered. Claims 3 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Accordingly, pending in this Office action are claims 1-10.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 102 that forms 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.
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 1, 2, 5, and 6 are rejected under 35 U.S.C. 102 as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chuang (US 2020/0075503).
Regarding Claim 1, Chuang (see, e.g., Fig. 1F), teaches a structure of a chip package integrated antenna, comprising:
a substrate 102 (see, e.g., par. 0025);
at least one chip unit 110A/B disposed on the substrate 102 (see, e.g., par. 0037);
at least two conductive units 108 disposed on the substrate 102 (see, e.g., par. 0034);
an encapsulation 118 disposed on the substrate 102 and covering the at least one chip unit 110A/B and the at least two conductive units 108, wherein the encapsulation 118 has a top surface, the top surface comprises at least two marked areas positioned to the at least two conductive units 108 (i.e., marked areas for openings accommodating elements 214), and at least two through holes are respectively formed in the at least two marked areas and formed between the top surface and the at least two conductive units 108 (see, e.g., pars. 0081-0083);
at least two conductive structures 214 respectively disposed on the at least two conductive units 108 and located in the at least two through holes (see, e.g., par. 0045); and
an antenna 206 disposed on the top surface and connected to the at least two conductive structures 214, wherein the antenna 206 is electrically connected to the at least one chip unit 110A/B through the at least two conductive structures 214, the at least two conductive units 108 and the substrate 102 in sequence (see, e.g., par. 0053).
Initially, and with respect to claim 1, note that a “product-by-process” claim is directed to the product per se, no matter how actually made. See In re Thorpe et al., 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which make it clear that it is the final product per se which must determine in a “product-by-process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product-by-process” claim or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26, USPQ 57, 61 (2d. Cir 1935).
NOTE that the applicant has burden of proof in such cases as the above case law makes clear.
Chuang teaches a device comprising all the limitations recited in the claim, including a substrate, at least one chip unit, at least two conductive units, an encapsulation having a top surface, at least two through holes, at least two conductive structures, an antenna (see, e.g., pars. 0025, 0034, 0037, 0045, 0053, 0081-0083).
In reference to the claimed process step where “…the top surface comprises at least two marked areas positioned to the at least two conductive units, and at least two through holes formed in the at least two marked areas…” this is considered an intermediate method step that does not affect the structure of the final device.
As to the grounds of rejection under section 103, see MPEP §2113 which discusses the handling of “product-by-process” claims and recommends the alternative (§ 102/§ 103) grounds of rejection.
Regarding Claim 2, Chuang teaches all aspects of claim 1. Chuang (see, e.g., Fig. 1F), teaches that at least one of the at least two conductive structures 214 protrudes from the top surface of the encapsulation 118.
Regarding Claim 5, Chuang teaches all aspects of claim 1. Chuang (see, e.g., Fig. 1F), teaches that a material of the at least two conductive structures 214 is a conductive silver paste or a solder paste (see, e.g., par. 0056).
Regarding Claim 6, Chuang teaches all aspects of claim 1. Chuang (see, e.g., Fig. 1F), teaches that the at least two conductive units 108 are a pin or a metal post (see, e.g., par. 0035).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chuang (US 2020/0075503).
Regarding Claim 4, Chuang teaches all aspects of claim 1. Chuang (see, e.g., Fig. 1F), teaches an antenna 206 formed on the top surface. Chuang is silent with respect to the claim limitation that the antenna is formed by a pad printing process.
In reference to the claimed process step “that the antenna is formed by a pad printing process” this is considered an intermediate method step that does not affect the structure of the final device.
See also the comments stated above in claim 1 regarding “product-by-process” limitations which are considered repeated here.
Allowable Subject Matter
Claims 7-9 are allowed.
Response to Arguments
Applicant’s arguments filed on 04/12/2026 with respect to the rejection of claim 1 have been fully considered but are moot in view of the new grounds of rejection.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nelson Garcés whose telephone number is (571)272-8249. The examiner can normally be reached on M-F 9:00 AM - 5:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached on (571)272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Nelson Garces/
Primary Examiner, Art Unit 2814
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