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
Status of the Claims
Applicant’s election, without traverse, of Group I, claims 1-24 in the reply filed on January 02nd, 2026, 27, 2024 is acknowledged. Non-elected invention of Group II, claims 25-34 have been withdrawn from consideration. Claims 1-34 are pending.
Action on merits of Group I, claims 1-24 follows.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on November 29th, 2023, January 19th, 2024, June 03rd, 2024, October 18th, 2024, March 13th, 2025, June 13th, 2025, July 07th, 2025 and February 23rd, 2026 have been considered by the examiner.
Drawings
The drawings filed on 10/26/2023 are acceptable.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112(f)/sixth paragraph
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a textured area configured to increase an area of the bottom surface …” as recited in claim 9; and “the preformed pillars are configured to be positioned with a pick and place tool” as recited in claim 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 3-4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Yeo (US 2015/0348882, hereinafter as Yeo ‘882).
Regarding Claim 1, Yeo ‘882 teaches a voltage isolated integrated circuit (IC) package configuration comprising:
a first package (Fig. 1, (110); [0051]) comprising a transformer (see para. [0015]) and a mold material (154; [0052]) enclosing the transformer to form a first package body, wherein the first package comprises a first lead (112; [0053]) set to permit electrical connection to the transformer; and a second package (102; [0051]) comprising a lead frame (152; [0053]), two or more semiconductor die (160; [0052]) supported by the lead frame (e.g. mounted on a central portion of lead frame (152); [0053]), and a mold material (154; [0052]) enclosing the two or more semiconductor die to form a second package body, wherein the lead frame comprises a second lead set (104, 108; [0057]) to permit electrical connection to the two or more semiconductor die (see para. [0054]-[0057]), wherein one or more leads of the first lead set (112) is directly electrically connected to one or more leads of the second lead set (104 and 108; [0056]) (see Fig. 1), and wherein the first package and the second package are mechanically coupled together ( the latter mechanical and electric connection between the respective first package (102) and the respective electronic member (110) of a respective stack (185, 190) is accomplished by a direct electrical solder connection; [0056]).
Examiner notes that claims 1-24 contain functional limitations “to permit electrical connection to the transformer” and “to permit electrical connection to the two or more semiconductor die” (emphasis added). According to MPEP 2173(05) g. "the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)”. In the instant case, “to permit electrical connection to the transformer” and “to permit electrical connection to the two or more semiconductor die” is nothing else than the result achieved by the invention.
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Fig. 1 (Yeo ‘882)
Regarding Claim 3, Yeo ‘882 teaches at least two leads (108) of the second lead set (104, 108) protrude from a side of the second package body (102) and are formed towards the first package body (110) (see Fig. 1).
Regarding Claim 4, Yeo ‘882 teaches the at least two formed leads (104, 108) are one or more of bent, curled, or shaped (see Fig. 1).
Regarding Claim 8, Yeo ‘882 the second package body (102) has a top surface adjacent to the first package (110) and a bottom surface configured to be adjacent to a substrate (106) (see Fig. 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.
Claims 2, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo ‘882 as applied to claim 1 above, and further in view of Takiar (US 5422435, hereinafter as Taki ‘435).
Regarding Claim 2, Yeo ‘882 is shown to teach all the features of the claim with the exception of explicitly the limitations: “a non-conductive adhesive disposed between the first package body and the second package body”.
Taki ‘435 teaches a non-conductive adhesive (Fig. 1, (50); col. 6, lines 10-15) disposed between the first package body (22) and the second package body (24).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Yeo ‘882 by having a non-conductive adhesive disposed between the first package body and the second package body for the purpose of enhancing the thermal performance (see col. 5; lines 55-60) as suggested by Taki ‘435.
Regarding Claim 9, Yeo ‘882 teaches the first package body (110) has a top surface and a bottom surface, wherein the bottom surface is adjacent to the second package (102) (see Fig. 1).
Yeo ‘882 and Taki ‘435 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a textured area configured to increase an area of the bottom surface”.
However, it has been held to be within the general skill of a worker in the art to select a textured area of an area of the bottom surface on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. (see Fig. 1 of Roberts (US 3940528) as evidence). In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). A person of ordinary skills in the art is motivated to have a textured area of the bottom surface in order to improve the performance of the semiconductor packaging.
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Regarding Claim 11, Taki ‘435 teaches the second package body (24) has a top surface and a bottom surface, wherein the bottom surface is adjacent to the first package (22) (see Fig. 1).
Yeo ‘882 and Taki ‘435 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a textured area configured to increase an area of the bottom surface”.
However, it has been held to be within the general skill of a worker in the art to select a textured area of an area of the bottom surface on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. (see Fig. 1 of Roberts (US 3940528) as evidence). In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). A person of ordinary skills in the art is motivated to have a textured area of the bottom surface in order to improve the performance of the semiconductor packaging.
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Claims 5-7, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo ‘882 as applied to claim 3 above, and further in view of Ramakrishna (US 2007/0228545, hereinafter as Rama ‘545).
Regarding Claim 5, Yeo ‘882 is shown to teach all the features of the claim with the exception of explicitly the limitations: “the first package body is press fit into the at least two formed leads of the second lead set”.
Rama ‘545 teaches the first package body (Fig. 27, (2702); [0084]) is press fit into the at least two formed leads (2710; [0084]) of the second lead set (see Fig. 27).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Yeo ‘882 by having the first package body is press fit into the at least two formed leads of the second lead set for the purpose of providing excellent mechanical and electrical performance for semiconductor packaging (see para. [0008]) as suggested by Rama ‘545.
Regarding Claim 6, Yeo ‘882 teaches an electrically conductive material positioned on the at least two formed leads (104, 108) of the second lead set, wherein the electrically conductive material is solder (e.g. formed by reflow soldering; [0056]).
Regarding Claim 7, Yeo ‘882 teaches the at least two formed leads (104/108) of the second lead set are soldered to leads of the first lead set (112) (see para. [0056]).
Regarding Claim 10, Rama ‘545 teaches the first package body (2702) has a top surface adjacent to the second package (2708) and a bottom surface configured to be adjacent to a substrate (not shown; [0004]).
Yeo ‘882 teaches a substrate (106).
Regarding Claim 12, Rama ‘545 teaches the first package (1200; [0067]) and the second package (1502; [0067]) are electrically and mechanically coupled together by conductive connections (1600; [0067]) disposed between the first package body (1200) and the second package body (1502) (see Fig. 17).
Claims 13-17, 20-23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo ‘882 as applied to claim 3 above, and further in view of Tan (US 2015/0214200, hereinafter as Tan ‘200).
Regarding Claim 13, Yeo ‘882 teaches the second package body (102) has a top surface and a bottom surface,
Yeo ‘882 is shown to teach all the features of the claim with the exception of explicitly the limitations: “preformed pillars that extend from the bottom surface to the top surface of the second package body”.
Tan ‘200 teaches a preformed pillars (Fig. 8j, (412); [0088]) that extend from the bottom surface to the top surface of the second package body (460; [0086]).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Yeo ‘882 by having the preformed pillars that extend from the bottom surface to the top surface of the second package body for the purpose of providing electrical connection between the first semiconductor chip and the second semiconductor chip (see para. [0088]) as suggested by Tan ‘200.
Regarding Claim 14, Tan ‘200 teaches the preformed pillars (412).
Yeo ‘882 and Tan ‘200 are shown to teach all the features of the claim with the exception of explicitly the limitations: “configured to be positioned with a pick and place tool”.
However, it has been held to be within the general skill of a worker in the art to position with a pick and place tool on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. A person of ordinary skills in the art is motivated to position with a pick and place tool when this allows a good flow with the other steps in the fabrication process.
Product by process limitation:
The expression “positioned with a pick and place tool” is/are taken to be a product by process limitation and is given no patentable weight. A product by process claim directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See In re Fessman, 180 USPQ 324, 326 (CCPA 1974); In re Marosi et al., 218 USPQ 289, 292 (Fed. Cir. 1983); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935); and particularly In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process steps, which must be determined in a “product by process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old and obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not.
Regarding Claim 15, Tan ‘200 teaches the preformed pillars (412) extend from the bottom surface to the top surface of the second package body
Yeo ‘882 and Tan ‘200 are shown to teach all the features of the claim with the exception of explicitly the limitations: “an inverted U-shape”. However, it has been held to be within the general skill of a worker in the art to have an inverted U-shape on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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A person of ordinary skills in the art is motivated to have an inverted U-shape when this allows a good flow with the other steps in the fabrication process.
Regarding Claim 16, Tan ‘200 teaches the preformed pillars (412) extend from the bottom surface to the top surface of the second package body.
Yeo ‘882 and Tan ‘200 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a S-shape”.
However, it has been held to be within the general skill of a worker in the art to have a S-shape on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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A person of ordinary skills in the art is motivated to have a S-shape when this allows a good flow with the other steps in the fabrication process.
Regarding Claim 17, Tan ‘200 teaches the preformed pillars (412) extend from the bottom surface to the top surface of the second package body; wherein the second package further comprises plating (see para. [0084]) in the apertures to form pillars.
Yeo ‘882 and Tan ‘200 are shown to teach all the features of the claim with the exception of explicitly the limitations: “apertures extend from a top surface to a bottom surface of the second package body”.
However, it has been held to be within the general skill of a worker in the art to have apertures extend from a top surface to a bottom surface of the second package body on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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A person of ordinary skills in the art is motivated to have apertures extend from a top surface to a bottom surface of the second package body when this allows a good flow with the other steps in the fabrication process.
Product by process limitation:
The expression “plating in the apertures to form pillars” is/are taken to be a product by process limitation and is given no patentable weight. A product by process claim directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See In re Fessman, 180 USPQ 324, 326 (CCPA 1974); In re Marosi et al., 218 USPQ 289, 292 (Fed. Cir. 1983); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935); and particularly In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process steps, which must be determined in a “product by process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old and obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not.
Regarding Claim 20, Tan ‘200 teaches the pillars (412) are comprised of copper (see para. [0084]).
Regarding Claim 21, Tan ‘200 teaches the second package body (460) is embedded within the first package body (470) (see Fig. 8j).
Regarding Claim 22, Tan ‘200 teaches the second package body (460) is partially embedded within the first package body (470) (see Fig. 8j).
Regarding Claim 23, Tan ‘200 teaches the second package body (460) is fully embedded within the first package body (470) (see Fig. 8j).
Regarding Claim 24, Tan ‘200 teaches the first package body has a top surface and a bottom surface, wherein the bottom surface comprises a castellated package edge (see Fig. 8j).
Further, it has been held to be within the general skill of a worker in the art to have a castellated package edge on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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A person of ordinary skills in the art is motivated to have a castellated package edge when this allows a good flow with the other steps in the fabrication process.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo ‘882 and Tan ‘200 as applied to claim 17 above, and further in view of Mariottini (US 2017/0352633, hereinafter as Mari ‘633).
Regarding Claim 18, Tan ‘200 teaches the pillars (412) and the second package body (see Fig. 8j).
Yeo ‘882 and Tan ‘200 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a diffusion barrier between the pillars and the second package body”.
Mari ‘633 teaches a diffusion barrier (Fig. 1, (134); [0019]) between the pillars (128; [0017]) and the second package body (not shown; [0005]).
Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify Yeo ‘882 and Tan ‘200 by having a diffusion barrier for the purpose of providing a good wetting surface for forming interconnects on the second material (see para. [0024]) as suggested by Mari ‘633.
Regarding Claim 19, Mari ‘633 teaches the diffusion barrier (134; [0024]) is comprised of nickel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to further show the state of the art with respect to semiconductor devices:
Lee et al. (US 2022/0084971 A1)
Na et al. (US 2013/0020695 A1)
Wehrly (US 2007/0158802 A1)
Wehrly et al. (US 2002/0142515 A1)
King et al. (US 6656767 B2)
For applicant’s benefit portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection it is noted that the PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS. See MPEP 2141.02 VI.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DZUNG T TRAN whose telephone number is (571) 270-3911. The examiner can normally be reached on M-F 8 AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Purvis can be reached on (571) 272-1236. 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.
/DZUNG TRAN/
Primary Examiner, Art Unit 2893
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