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
In response to a restriction requirement mailed on 05/12/2026, the Applicant elected Invention I (Group) drawn to a method encompassing claims 1-13 and 15-18 with traverse on 07/13/2026 on the ground that the grounds that (i) “First, the inventions must be independent or distinct” and (ii) “Second, searching the additional inventions must constitute an undue burden on the examiner if the restriction is not required.” The examiner respectfully disagrees.
As to the first ground (i), the Inventions I and II are distinct as stated on page 2 of the restriction requirement “as process limitations in claim 14 may not be afforded patentable weight as they may not structurally distinguish the semiconductor package.”
As to the second ground (ii), an undue burden on the examiner would exists because Inventions I and II have acquired a separate status in the art because of their recognized divergent subject matter, as exemplified by the different classes and subclasses. Further, a search for the inventions I and II would not be coextensive, because a search indicating that the process is novel or unobvious would not extend to a holding that the product itself is novel or unobvious.
Therefore, the requirement is still deemed proper and is made FINAL.
Currently, claims 1-18 are pending. Non-elected Invention II (Group II) drawn to a semiconductor package claim 14 is withdrawn. Elected method claims 1-13 and 15-18 are examined below.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Information disclosure statement (IDS) submitted on 09/28/2023 (“09-28-23 IDS”) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the 09-28-23
IDS is being considered by the examiner.
Specification
The specification is objected to, because the title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: METHOD OF IMPROVING PACKAGE CREEPAGE DISTANCE BY APPLING INSULATING MATERIAL OVER CONTACTS
Claim Rejections - 35 USC § 1021
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 1-5, 7, 9-13 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pub. No. US 2022/0028765 A1 to Koduri ("Koduri") (cited in the 09-28-23 IDS).
Fig. 1C of Koduri has been provided to support the rejections below:
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Regarding independent claim 1, Koduri teaches a method of improving semiconductor package creepage, wherein the package (see Fig. 1C) comprises a semiconductor device 90 (para [0037] - “a semiconductor die 90”), a plurality of electrically conductive contacts 104 (para [0032] - “conductive terminals 104”) at a surface of the package, and insulating material 112 (para [0033] - “In examples, the coat 112 is composed of an insulative material, such as a polymer (e.g., polyimide…’) for electrically insulating the package between the plurality of conductive contacts 104, with an initial creepage distance defined by the shortest distance over the surface of the package between two of the plurality of contacts 104, wherein the method comprises the steps of:
applying a layer of insulating material 112 over at least part of at least one of the two contacts 104, wherein the two contacts 104 comprise a heatsink (para [0032] - “In examples, the conductive terminals 104 comprise a metal such as copper and are plated (e.g., with tin, nickel palladium gold, etc.)…”; metals are capable dissipating heat.) of the package, and wherein the insulating material 112 is applied in a thin layer.
A first limitation of “has a package thermal resistance with less than a factor 3 increase as compared to an uncoated semiconductor package” is statement of intended property or characteristics of the materials such as polyimide (para [0060]) as disclosed in the Specification of the instant application. Since Koduri teaches that the insulating material 112 can be made of polyimide, the polyimide insulating material 112 is reasonably capable of having the intended property or characteristics as claimed in the first limitation.
A second limitation of “to increase the initial creepage distance and improve package creepage of the semiconductor package” is a statement of intended result, so the limitation does not distinguish the method over the method taught by Koduri. Moreover, since Koduri teaches all of the method steps, Koduri is reasonably capable inuring the benefit of the intended result upon the package (see also para [0037] - “When the insulative coat 112 covers portions of the conductive terminals 104, the creepage distance between the exposed portions of opposing conductive terminals is increased, thus reducing the likelihood of arcing in high-voltage applications without increasing the overall size of the semiconductor device 100.”).
Regarding claim 2, a limitation of “wherein the insulating material is selected to obtain a package thermal resistance increase less than a factor 2 as compared to an uncoated semiconductor package” is statement of intended property or characteristics of the materials such as polyimide (para [0060]) as disclosed in the Specification of the instant application. Since Koduri teaches that the insulating material 112 can be made of polyimide, the polyimide insulating material 112 is reasonably capable of having the intended property or characteristics as claimed in the limitation.
Regarding claim 3, a limitation of “wherein the insulating material is selected by having an electrical volume resistivity in the range of 1x1016 to 1x1018” is statement of intended property or characteristics of the materials such as polyimide (para [0060]) as disclosed in the Specification of the instant application. Since Koduri teaches that the insulating material 112 can be made of polyimide, the polyimide insulating material 112 is reasonably capable of having the intended property or characteristics as claimed in the limitation.
Regarding claim 4, Koduri teaches the insulating material 112 that is polyimide.
Regarding claim 5, Koduri teaches the insulating material 112 after application that has a thickness of less than 100 [Symbol font/0x6D]m (para [0036] - “In some examples, the coat 112 has a thickness ranging from 100 nanometers to 10 microns, inclusive.”).
Regarding claim 7, Koduri teaches the insulating material 112 that is applied by a deposition method (para [0052] - “The coating material 1200 may be applied using a spray technique or a dipping technique”. Spraying or dipping coating material deposits the insulating material on an intended object.).
Regarding claim 9, Koduri teaches the insulating material 112 that is applied by spraying (para [0052] - “The coating material 1200 may be applied using a spray technique…”).
Regarding claim 10, Koduri teaches the insulating material 112 that is applied to a part of one of the two contacts 104.
Regarding claim 11, Koduri teaches the insulating material 112 that is applied to cover all of the surface of one of the two contacts 104.
Regarding claim 12, Koduri teaches the insulating material 112 that is applied to cover all of the surface of the plurality of contacts 104 of the package.
Regarding claim 13, Koduri teaches the device 90 that is a discrete Surface-Mounted Device (SMD).
Regarding claim 15, a limitation of “wherein the insulating material is selected by having an electrical volume resistivity in the range of 1x1016 to 1x1018” is statement of intended property or characteristics of the materials such as polyimide (para [0060]) as disclosed in the Specification of the instant application. Since Koduri teaches that the insulating material 112 can be made of polyimide, the polyimide insulating material 112 is reasonably capable of having the intended property or characteristics as claimed in the limitation.
Regarding claim 16, Koduri teaches the insulating material 112 that is polyimide.
Regarding claim 17, Koduri teaches the insulating material 112 after application that has a thickness of less than 100 [Symbol font/0x6D]m (para [0036] - “In some examples, the coat 112 has a thickness ranging from 100 nanometers to 10 microns, inclusive.”).
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
(1). Determining the scope and contents of the prior art.
(2). Ascertaining the differences between the prior art and the claims at issue.
(3). Resolving the level of ordinary skill in the pertinent art.
(4). Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Koduri in view of Pub. No. US 2011/0165338 A1 to Kitajima (“Kitajima”) and further in view of Pub. No. US 2008/0119035 A1 to Daubenspeck et al. (“Daubenspeck”).
Regarding claim 6, Koduri does not disclose an atomic level deposition (ALD) method for applying the insulating material 112.
However, Kitajima teaches applying an insulating material (para [0066] - “solder dam coating on the lead frame 16”; para [0064]) using a sputtering process (para [0066]).
Daubenspeck teaches that polyimide can be applied using, among other things, sputtering and ALD (para [0020] - “For example, depositing may include but is not limited to spin application of organic materials like photoresist and polyimide, in addition to inorganic films deposited by chemical vapor deposition (CVD), low-pressure CVD (LPCVD), plasma-enhanced CVD (PECVD), semi-atmosphere CVD (SACVD) and high density plasma CVD (HDPCVD), rapid thermal CVD (RTCVD), ultra-high vacuum CVD (UHVCVD), sputtering deposition, ion beam deposition, electron beam deposition, laser assisted deposition, spin-on methods, physical vapor deposition (PVD), atomic layer deposition (ALD), depending on the materials deposited.”). Thus, Daubenspeck recognizes that the sputtering and ALD are functionally equivalent when it comes to applying an insulating coating.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to substitute the spraying method of applying an insulating material with a known vapor deposition process including ALD taught by the combination of Kitajima and Daubenspeck as “One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.” (see Subsection D or MPEP 2143.I.). Whether or not the insulating material is deposited with spraying or sputtering, the resulting insulating material on the package terminals would predictably function as intended as an insulative coating.
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Koduri and further in view of Pub. No. US 2018/0174936 A1 to Bayerer (“Bayerer”).
Regarding claim 7, in an alternate ground of rejection, Koduri does not disclose a deposition method for applying the insulating material 112.
However, Bayerer teaches applying an insulating material 106/208 using a chemical vapor deposition (CVD) process (para [0034]) and opines that the CVD coating process can be selective “in that the package terminals 104/206 can be coated outside contact areas of the terminals 104/206 which make contact to other electrical conductors of the system.” (para [0034]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to substitute the spraying method of applying an insulating material with a known vapor deposition process taught by Bayerer as “One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.” (see Subsection D or MPEP 2143.I.). Whether or not the insulating material is deposited with spraying or vapor deposition, the resulting insulating material on the package terminals would predictably function as intended as an insulative coating.
Regarding claim 18, the combination of Koduri and Bayerer teaches the deposition method that is a vacuum deposition method (Bayerer, para [0034]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Koduri and further in view of Kitajima.
Regarding claim 8, Koduri does not disclose a sputtering method for applying the insulating material 112.
However, Kitajima teaches applying an insulating material (para [0066] - “solder dam coating on the lead frame 16”; para [0064]) using a sputtering process (para [0066]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to substitute the spraying method of applying an insulating material with a known sputtering process taught by Kitajima as “One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.” (see Subsection D or MPEP 2143.I.). Whether or not the insulating material is deposited with spraying or sputtering, the resulting insulating material on the package terminals would predictably function as intended as an insulative coating.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 1 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 3 of a co-pending application no. 18/652,878 (" '878 Appplication"). Although the conflicting claims are not identical, they are not patentably distinct from each other, because the scope of claim 3 of the '878 Application is at least substantially the same with that of claim 1 of the present application.
Regarding independent claim 1 of the present application, claim 3 of the '878 Application is narrower or substantially the same in scope as the claim 1 of the present application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JUNG whose telephone number is (408) 918-7554. The examiner can normally be reached on 8:30 A.M. to 7 P.M.
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, Eliseo Ramos-Feliciano can be reached on (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL JUNG/Primary Examiner, Art Unit 2817 05 October 2026
1 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.
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