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 remarks/amendments of claims 1-2, 4-24 in the reply filed on May 29th, 2026, are acknowledged. Claims 1, 4-5, 7-11, 13, 15-17 and 24 have been amended. Claims 25-34 have been withdrawn from consideration. Claim 3 has been canceled. New claim 35 has been added. Claims 1-2 and 4-35 are pending.
Action on merits of claims 1-2, 4-24 and 35 as follows.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on April 24th, 2026 and June 12th, 2026, have been considered by the examiner.
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 § 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.
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 1-2, 4, 8-10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over by Yeo (US 2015/0348882, hereinafter as Yeo ‘882) in view of King (US 6329221, hereinafter as King ‘221).
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]).
Yeo ‘882 is shown to teach all the features of the claim with the exception of explicitly the limitations: “at least two leads of the second lead set protrude from side surfaces of the second package body and are formed to contact side surfaces of the first package body to apply a pressure to secure the first package to the second package”.
King ‘221 teaches at least two leads of the second lead set (Fig. 11, (80); col. 6, lines 29-30) protrude from side surfaces of the second package body (14A; col. 5, lines 35-40) and are formed to contact side surfaces of the first package body (see Fig. 3).
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 at least two leads of the second lead set protrude from side surfaces of the second package body and are formed to contact side surfaces of the first package body in order to provide a high density, minimal volume configuration, and high response rate series of interconnected semiconductor devices for use in conjunction with a PCB (see col. 2, lines 27-30) as suggested by King ‘221.
Examiner notes that claim 1 contains functional limitations “to permit electrical connection to the transformer”, “to permit electrical connection to the two or more semiconductor die” and “to apply a pressure to secure the first package to the second package” (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”, “to permit electrical connection to the two or more semiconductor die” and “to apply a pressure to secure the first package to the second package” are nothing else than the result achieved by the invention.
Regarding Claim 2, King ‘221 teaches a non-conductive adhesive (Fig. 3, (22); col. 4, line 5) disposed between the first package body and the second package body (see Fig. 3).
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Fig. 1 (Yeo ‘882)
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Fig. 11 (King ‘221)
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, King ‘221 teaches the second package body (14B) has a top surface that contacts a bottom surface of the first package (14A) (see Fig. 11) and a bottom surface configured to contact a substrate (or board (18)) (see Fig. 3).
Regarding Claim 9, Yeo ‘882 teaches the bottom surface of the first package body (110) has a top surface and a bottom surface (see Fig. 1).
Yeo ‘882 and King ‘221 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 10, King ‘221 teaches the first package body (2702) has a top surface that contacts a bottom surface of the second package body (see Fig. 11) and a bottom surface configured to contact a substrate (18) (see Fig. 3).
Regarding Claim 11, King ‘221 teaches the bottom surface the second package body (see Fig. 3).
Yeo ‘882 and King ‘221 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, 12 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo ‘882 and King ‘221 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 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).
Regarding Claim 35, Rama ‘545 teaches the mold material of the first package body is recessed to expose two or more leads of the first lead set (404; [0048]) and the at least two formed leads of the second lead set (102; [0044]) directly electrically connect to the two or more exposed leads of the first lead set (see Figs. 4-5).
Claims 13-17, 20-23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Yeo ‘882 and King ‘221 as applied to claim 3 above, and further in view of Tan (US 2015/0187738, hereinafter as Tan ‘738).
Regarding Claim 13, Yeo ‘882 teaches the second package body (102) has a top surface and a bottom surface.
Yeo ‘882 and King ‘221 are shown to teach all the features of the claim with the exception of explicitly the limitations: “preformed pillars that extend from a bottom surface of the second package body to a the top surface of the second package body”.
Tan ‘738 teaches a preformed pillars (Fig. 10B, (212); [0047]) that extend from a bottom surface of the second package body to a top surface of the second package body (see Fig. 10B).
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 King ‘221 by having preformed pillars that extend from a bottom surface of the second package body (260; [0045]) to a the top surface of the second package body for the purpose of providing an electric connection with external circuits (see para. [0047]) as suggested by Tan ‘738.
Regarding Claim 14, Tan ‘738 teaches the preformed pillars (212).
Yeo ‘882, Tan ‘738 and King ‘221 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 ‘738 teaches the preformed pillars (212) extend from the bottom surface of the second package body to the top surface the second package body.
Yeo ‘882, Tan ‘738 and King ‘221 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 ‘738 teaches the preformed pillars (212) extend from the bottom surface the second package body to the top surface of the second package body (see Fig. 10B).
Yeo ‘882, Tan ‘738 and King ‘221 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 ‘738 teaches the preformed pillars (212) extend from the bottom surface of the second package body to the top surface of the second package body (see Fig. 10B); wherein the second package further comprises plating (see para. [0070]).
Yeo ‘882, Tan ‘738 and King ‘221 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 ‘738 teaches the pillars (212) are comprised of copper (see para. [0047]).
Regarding Claim 21, Tan ‘738 teaches the second package body (260) is embedded within the first package body (270) (see Fig. 14B).
Regarding Claim 22, Tan ‘7380 teaches the second package body (260) is partially embedded within the first package body (270) (see Fig. 14B).
Regarding Claim 23, Tan ‘738 teaches the second package body (260) is fully embedded within the first package body (270) (see Fig. 14B).
Regarding Claim 24, Tan ‘738 teaches a bottom surface of the first package body comprises a castellated package edge (see Fig. 14B).
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, King ‘221 and Tan ‘738 as applied to claim 17 above, and further in view of Mariottini (US 2017/0352633, hereinafter as Mari ‘633).
Regarding Claim 18, Tan ‘738 teaches the pillars (212) and the second package body (see Fig. 10B).
Yeo ‘882, King ‘221 and Tan ‘738 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, King ‘221 and Tan ‘738 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.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4-24 and 35, filed on May 29th, 2026, have been considered but are moot in view of the new ground of rejection.
Interviews After Final
Applicants note that an interview after a final rejection is permitted in order to place the application in condition for allowance or to resolve issues prior to appeal. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Upon review of the agenda, the Examiner may grant the interview if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations will be denied. See MPEP § 714.13
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Dzung 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, 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
Prosecution Insights