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 .
Election/Restrictions
Applicant’s election without traverse of the Species 1 invention reading on Fig. 1 in the reply filed on 12/11/2025 is acknowledged. The Applicants indicated that claims 1, 2, and 4-9 read on the elected species. Claims 3 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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
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 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.
Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 and at least two through holes (i.e., holes for accommodating elements 214), and the at least two through holes are respectively 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).
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 Rejections - 35 USC § 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 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. 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 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.
Initially, and with respect to claim 4, 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.
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.
Allowable Subject Matter
Claims 7-9 are allowed.
Conclusion
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.
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/Nelson Garces/
Primary Examiner, Art Unit 2814