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 .
Status of Claims
Claims 1-10 are examined on merits herein.
Specification
Specification is objected to since it is not clear where the packaged integrated circuit is taken for cooling from a high temperature chamber, as described in paragraphs 0024-0025 of a published application US 2025/0112058. The specification does not make it clear how it is possible to avoid a damage due to a thermal stress of a component heated to a high temperature and sequentially being placed into an environment with a relatively low temperature: See Naoki et al. (JP 2002192652, e.g., page 13 of the attached machine translation) on a requirement to cool a product in a same temperature chamber in which it was heated. Moreover, there are multiple prior arts (more than a thousand in a patent literature alone) related to a chip damage due to its thermal stress; see, for example, column 1 paragraph 2 of US 5,940,279 of Gademann, on a common knowledge of a damage of an electronic component in a case of a thermal stress.
Claim Objections
Claims 1 and 5-10 are objected to because of the following informalities:
Claim 1 recites: “to room temperature”. Examiner suggests changing the recitation to: “to a room temperature”.
Claim 5 recites: “heat radiation at temperature”. The Examiner suggests changing the recitation to: “heat radiation at a temperature”.
Claim 6 recites: “two repeats at the maximum if”. Examiner suggests changing the recitation to: “two repeats at maximum if”.
Claim 7 recites: “to room temperature”. Examiner suggests changing the recitation to: “to the room temperature”.
Claim 8 recites: “in ultrasonic vibration bathing device”. Examiner suggests changing the recitation to: “in an ultrasonic bathing device”.
Claim 9 recites: “wherein visual inspection”. Examiner suggests changing the recitation to: “wherein a visual inspection”.
Claim 10 recites: “fuming nitric acid”. Examiner suggests changing the recitation to: “a fuming nitride acid”.
Appropriate corrections are required.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In re Claim 1: Line 4 of Claim 1 recites: “cooling the heat-treated package”. There is a lack of antecedent basis for using an article “the” in the cited recitation, since the claim earlier does not recite: “a package”, but recites: “packaged integrated circuit”.
Appropriate correction is required to clarify the claim language.
For this Office Action, the cited limitation was interpreted as: “cooling the heat-treated packaged integrated circuit”.
Another option for interpretation and modification a claim language could be – disclosing a packaged integrated circuit as comprising a die and an encapsulant (or an epoxy) encapsulating the die or its top part (in Claim 1), and using, with an appropriate article and/or modification a word “die” in Claim 1 and following claims.
In re Claim 1: Line 6 of Claim 1 recites: “inspecting the water cleaned die”. There is a lack of antecedent basis for using “die” with article “the”, since this is a first recitation of a die, while earlier, the claim recites: “a packaged integrated circuit”.
Appropriate correction is required to clarify the claim language.
For this Office Action, the above-cited recitation of line 6 was interpreted as: “inspecting a water cleaned and at least partially decapsulated packaged integrated circuit”.
In re Claim 3: Claim 3 recites: “the temperature of the thermal chamber”. There is a lack of antecedent basis for citing “temperature” with an article “the”. Appropriate correction is required to clarify the claim language.
For this Office Action, the cited recitation was interpreted as: “a temperature of the thermal chamber”.
In re Claim 4: Claim 4 recites: ‘the timer” and “the range”, which are rejected to a lack of antecedent basis. Appropriate corrections are required (see the rejection of Claim 3 on a same ground).
In re Claim 5: Claim 5 recites: “for the duration”. There is a lack of antecedent basis for citing “duration” with an article: “the”, since Claim 4, on which Claim 5 depends, recites “a timer” and “a range of 1.5 to 2 hours”, but does not recite a word: “duration”.
Appropriate correction is required to clarify the claim language.
For this Office Action, the cited limitation of Claim 5 was interpreted as: “for a duration”.
In re Claim 6: Claim 6 recites: “The step of checking if further heat treatment is necessary of claim 1, wherein a visual inspection is conducted to see if the plastic encapsulant”. The recitation is not quite clear, since paragraphs 0024-0025 of the published application, US 2025/0112058, teach that a step of cooling is necessary before any inspection, while Claim 1, on which Claim 6 depends, is not clear with respect to orders of “checking” and “cooling” steps. In addition, there is a lack of antecedent basis for using “plastic encapsulant” with an article “the”, since this is the first reference to: “plastic encapsulant”.
Appropriate corrections are required to clarify the claim language.
For this Office Action, the cited recitation of Claim 6 was interpreted as: “The step of checking if a further heat treatment is necessary of claim 1, wherein a visual inspection is conducted, after the cooling the heat-treated package, to see if a plastic encapsulant””.
In re Claim 7: Claim 7 recites: “the thermal chamber”. There is a lack of antecedent basis for using “the” in the cited recitation. Appropriate correction is required.
In re Claim 7: In view of a lack of explanation by the specification on a cooling step, as it is shown in the objection to the specification, limitations related to cooling were omitted from consideration.
In re Claim 8: Claim 8 recites: “the die”. In view of interpretation of Claim 1, the cited recitation of Claim 8, for this Office Action, was interpreted as: “the at least partially decapsulating packaged integrated circuit”.
In re Claim 9: Claim 9 twice recites “die”. In view of interpretation of Claim 1, the cited recitations were interpreted as: “the at least partially decapsulating packaged integrated circuit”.
In re Claim 10: In view of interpretation of Claim 1, a recitation of “the die” was interpreted as: “the at least partially decapsulating packaged integrated circuit”.
In re Claim 10: Claim 10 recites: “the epoxy residue”, “the surface”, and: “the die marking(s)”. To overcome multiple issues of lacking of antecedent basis, for this Office Action, the cited recitations were interpreted as: “an epoxy residue”, “a surface”, and: “marking(s)”.
In re Claim 2: Claim 2 is rejected under 35 U.S.C. 112(b) due to dependency on Claim 1.
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.
As far as the claims are understood, Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Heyl (US 2007/0075050) in view of Michiharu et al. (WO 2013031860A), Naoki et al. (JP 2002192652), Wagner et al. (US 2015/0118856), and Ren et al. (US 2006/0141787).
In re Claim 1, Heyl teaches a method of decapsulating a packaged integrated circuit (Abstract and Claims 1, 7, 9, 14, 20), in an enclosed chamber (paragraph 0039) comprising the steps of:
subjecting the packaged integrated circuit (incorporating a plastic molding paragraph 0004, including resin, paragraph 0043) to a laser oblation for decapsulation (paragraphs 0004-0008);
checking, by optical means, at intermissions of the laser oblation, if further laser oblation is necessary (and continuing the laser oblation when necessary);
cleaning (paragraphs 0012, 0056, 0061, 0081);
inspecting the die after a last laser oblation.
Heyl does not teach that the packaged integrated circuit is subjected to a radiation heat, e.g., together or instead of the laser oblation, and, accordingly, Heyl does not teach checking if a further heat treatment is necessary (during heating). Heyl does not teach steps of cooling the heat-treated package to a room temperature; followed by cleaning of the cooled package in 100% deionized water and inspecting the package after this cleaning, and does not teach an optional step of acid cleaning.
At the same time, one of ordinary skill in the art would understand that the laser oblation method is relatively complicated: It includes steps of adjustment of laser parameters (paragraph 0027) before and during the oblation and even during the laser scan of different areas of a scanned surface subjected to decapsulation, multiple laser scans of same portions of the surface of the packaged circuit and/or partially decapsulated packaged integrated circuit (paragraphs 0028, 0037, 0045) at different periods of oblation; the laser oblation method may overheat scanned areas leading to wiring damage under the encapsulant (paragraph 0028-0029, 0046), etc. This complicity and possibility to damage a die/circuit covered by a molding material may lead to a search of alternative approaches to decapsulation.
Michiharu teaches (an underlined sentence in paragraph 3 on page 20) that some resins are thermally decomposed at a temperature of 500 oC when heated for about 1 hour, and Michiharu used this step of a resin decomposition in practice. It would have been obvious for one of ordinary skill in the art before filing the application to understand that a heating at such high temperature should be made in a corresponding temperature chamber.
Heyl and Michiharu teach analogous arts directed to decomposition of resins, and one of ordinary skill in the art before filing the application would have had a reasonable expectation of success in modifying or changing the Heyl method in view of the Michiharu teaching, since they are from a same field of endeavor (which is decomposition of resins), while the heat treatment of Michiharu lead to successful decomposition of the resin.
Based on the simplicity and success of the Michiharu step for decomposing a resin, it would have been obvious for one of ordinary skill in the art before filing the application to switch from the Heyl laser oblation method to a method of a thermal decomposition of the molded material in a temperature chamber - for decapsulating the packaged integrated circuit, while leaving such steps taught by Heyl as intermediate checking if further heating (instead of further laser oblation) is required and an inspection of a quality of decapsulation after the last heat treatment step. It would have been further obvious for one of ordinary skill in the art before filing the application to know in advance a temperature of a thermal decomposition of a molded resin of the packaged circuit, as well as safe temperatures for materials and elements of the integrated circuit, and using the radiation heat method only for the packages a molded material of which can be decomposed at temperatures that are safe for all parts and elements of the integrated circuit.
With the modifications as above, Heyl/Michiharu does not teach a step of cooling and a step of deionized water cleaning.
Naoki teaches (an underlined sentence on page 13) that after a product is heated to a temperature of 450 oC in a temperature chamber (a type of a hot-air dryer), it shall be cooled before being taken out of the chamber.
Heyl/Michiharu and Naoki teach analogous arts directed to dealing with a product subjected to high-temperature heating, and one of ordinary skill in the art before filing the application would have had a reasonable expectation of success in modifying the Heyl/Michiharu method in view of the Naoki teaching, since they are from a same field of endeavor, while Naoki successfully used the cooling.
The Heyl method does not need cooling, at least, during intermediate checking, since all checking and inspections are made inside a chamber 80 (Fig. 1, paragraphs 0039-0043). However, since the Heyl/Michiharu decapsulated package shall be removed from a high-heated chamber to a room-temperature environment, it would have been obvious for one of ordinary skill in the art before filing the application to cool a decapsulated (packaged) integrated circuit before removing it from the temperature chamber, otherwise, a thermal stress, due to a large difference of environmental temperatures inside the chamber and outside of it, will damage the integrated circuit.
In view of the needed step of cooling (per Naoki) after the heating/decomposition, one of ordinary skill in the art before filing the application would have to further modify the Heyl/Michiharu/Naoki method by conducting intermediate checking of a partially decapsulated package also outside the temperature chamber, avoiding building a complicated optical checking system of Heyl for checking the package inside the chamber, after appropriate cooling the package to a room temperature inside the temperature chamber.
Heyl/Michiharu/Naoki does not teach a step of cleaning in 100% deionized water. However, Heyl teaches that decapsulating includes a clean-up step (paragraphs 0012, 0056), after laser oblation, when an insignificant amount of a mold material is left, where the clean-up step is conducted with a same laser that was used for the laser oblation (paragraphs 0060, 0081) but using a different operating mode.
Wagner teaches (paragraphs 00002, 0048) that residues left after decapsulation may be removed by ultrasonic cleaning, while Ren teaches that ultrasonic cleaning shall be conducted in a deionized water (paragraph 0022) including ultra-pure (that inherently includes 100% clear) deionized water (paragraph 0026).
Heyl/Michiharu/Naoki and Wagner and Ren teach analogous arts directed to a step of cleaning, and one of ordinary skill in the art before filing the application would have had a reasonable expectation of success in modifying the Heyl/Michiharu/Naoki method in view of the Wagner and Ren method, since they are from the same field of endeavor, and the Wagner and Ren method are successfully used in the art.
It would have been obvious for one of ordinary skill in the art before filing the application to conduct a clean-up step using an ultrasonic cleaning in a 100% deionized water, per Wagner and Ren, in order to enable the cleaning process.
Heyl further teaches that conventional methods of decapsulation utilize fuming nitric acid (paragraph 0006), but points out that they are not successful for decomposition of all mold materials, while Wagner teaches (paragraph 0048) that when a residue is left after ultrasonic cleaning, additional step of etching is needed.
It would have been obvious for one of ordinary skill in the art before filing the application to continue the Heyl/Michiharu/Naoki/Wagner/Ren method with a step of an acid cleaning/etching, if this step is capable of removing the residue left by the ultrasonic cleaning.
In re Claim 2, Heyl/Michiharu/Naoki/Wagner/Ren teaches the step of subjecting the packaged integrated circuit to radiation heat of Claim 1 as cited above, wherein, as shown for Claim 1, said packaged integrated circuit is placed into a thermal chamber.
In re Claim 3 Heyl/Michiharu/Naoki/Wagner/Ren teaches the thermal chamber of Claim 2 as cited above, wherein, as shown for Claim 1, the temperature of the thermal chamber is set to a temperature of 500 oC (if such temperature is needed for decomposition of the encapsulating material), e.g., the temperature is chosen from the range of 500°C to 600°C. Note that in accordance with MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions. I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of “50 to 100 Angstroms” considered prima facie obvious in view of prior art reference teaching that “for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms].” The court stated that “by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range.”).
In re Claim 4, Heyl/Michiharu/Naoki/Wagner/Ren teaches the thermal chamber of Claim 2 as cited above, including a timer of the thermal chamber set to 1 hour, and does not explicitly teach that the timer of the thermal chamber is set in the range of 1.5 to 2 hours.
However, one of ordinary skill in the art before filing the application would understand that a time of a molded material decomposition depends on a material, on its thickness, and sometimes, a larger time is needed than that Michiharu refers.
It would have been obvious for one of ordinary skill in the art before filing the application to set a timer of the thermal chamber to a duration from 1.5 hours to 2 hours, if existing experience and/or a thickness of the mold material allows to suggests that such time is needed for decapsulating. Note that in accordance with MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-07.2015]. II Routine Optimization, A. Optimization within Prior Art Conditions or Through Routine Experimentation, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 220F.2d.454.
In re Claim 5, Heyl/Michiharu/Naoki/Wagner/Ren teaches the step of subjecting the packaged integrated circuit to radiation heat of Claim 1 as shown above.
It would have been obvious for one of ordinary skill in the art before filing the application to subjected the packaged integrated circuit to heat radiation at temperature set in Claim 3 for the duration set in Claim 4 for the same reasons that are explained for Claims 3 and 4.
In re Claim 6, Heyl/Michiharu/Naoki/Wagner/Ren teaches the step of checking, including checking during and after the heat treatment, as pointed out for Claim 1, wherein:
a visual inspection is conducted (Heyl, paragraph 0044-0045) to see if the plastic encapsulant is completely turned into ashes – the last limitation is obvious for decomposition of the encapsulant when the heat decomposition is used, and
repeating the step of subjecting the packaged integrated circuit to radiation heat – similar to repeated steps during oblation (Heyl, paragraph 0053).
Heyl/Michiharu/Naoki/Wagner/Ren does not teach that repeated steps of the heat radiation comprise two repeats at the maximum - if the plastic encapsulant is not completely turned into ashes. However, if all physical properties of the packaged integrated circuit are known, including the molding material and its maximum thickness, it is possible to repeat the heating steps not more than twice where the heating temperature and heating time may be chosen in advance with such precision that not more than two repeats of the heating procedure are needed.
In re Claim 7, Heyl/Michiharu/Naoki/Wagner/Ren teaches the step of cooling of Claim 1 as cited above, wherein the heat treated packaged integrated circuit is taken out of the thermal chamber and left to cool down to room temperature for a duration of at least 30 minutes (e.g., in accordance with interpretation).
In re Claim 8, Heyl/Michiharu/Naoki/Wagner/Ren teaches the cleaning in 100% deionized water step of Claim 1, wherein, as is shown for Claim 1, the die is subject to cleaning in ultrasonic vibration bathing device filled with 100% deionized water.
In re Claim 9, Heyl/Michiharu/Naoki/Wagner/Ren teaches the inspecting the water cleaned die step of Claim 1 as cited above, including checking for residue left, and where a molding material could be epoxy (Heyl, paragraph 0007).
Heyl further teaches that visual inspection to see any epoxy residue adhered to the die is conducted under a microscope (paragraph 0044).
In re Claim 10, Heyl/Michiharu/Naoki/Wagner/Ren teaches the optional acid cleaning step of Claim 1 as cited above, wherein, as shown for Claim 1, fuming nitric acid is used to remove the epoxy residue. It would have been obvious for one of ordinary skill in the art before filing the application to remove by this method a residue bonded to the surface of the die and blocking the die marking(s) when it is desirable to see information provided on the marking. Note that there are thousand of prior arts directed to marking existing on an integrated circuit; see, for example paragraph 0005 of Manning (US 2001/0002461).
Conclusion
Any inquiry concerning this communication should be directed to GALINA G YUSHINA whose telephone number is 571-270-7440. The Examiner can normally be reached between 8 AM - 7 PM Pacific Time (Flexible).
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/GALINA G YUSHINA/Primary Patent Examiner, Art Unit 2811, TC 2800,
United States Patent and Trademark Office
E-mail: galina.yushina@USPTO.gov
Phone: 571-270-7440
Date: 11/28/25