DETAILED ACTION
This action is responsive to application No. 18/505,928 filed on November 09, 2023.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment
The amendment filed on 08/12/2026 responding to the Office action mailed on 05/12/2026, has been entered. The present Office action is made with all the suggested amendments being fully considered. Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention, there being no allowable generic or linking claim. Accordingly, pending in this Office action are claims 1-20.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 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.
Claims 1, 2, 4-11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Weis (US 2024/0113037) in view of Sung (US 2020/0328189).
Regarding Claim 1, Weis (see, e.g., Fig. 7), teaches a semiconductor device assembly 100 (see, e.g., par. 0077), comprising:
a support layer 106 with an inside surface (see, e.g., par. 0078);
a semiconductor device 112 disposed on the inside surface (see, e.g., par. 0080); and
an encapsulant material 114 at least partially encapsulating the semiconductor device 112, including (see, e.g., par. 0083):
a bulk material 118 (see, e.g., par. 0087), and
thermally conductive nanoparticles 120 distributed through the bulk material 118, each nanoparticle 120 having an electrically insulative shell 124 and an electrically conductive core 122 (see, e.g., pars. 0087, 0122).
Weis is silent with respect to the claim limitation that the electrically conductive core comprises carbon nanotubes or graphene fragments.
Weis discloses the claimed invention except for the use of copper instead of carbon nanotubes or graphene fragments for the electrically conductive core. Sung (see, e.g., Fig. 9, par. 0074), on the other hand teaches that carbon nanotubes and copper are equivalent materials known in the art. Therefore, because these conductive materials were art-recognized equivalents at the time of the invention, one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, one of ordinary skill in the art would have found it obvious to substitute carbon nanotubes for copper since the substitution would yield predictable results. See Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. _, 82 YSPQ2d 1385 (2007).
Regarding Claim 2, Weis and Sung teach all aspects of claim 1. Weis (see, e.g., Fig. 7), teaches that the electrically insulative shell 124 comprises silica (see, e.g., pars. 0087, 0122).
Regarding Claim 4, Weis and Sung teach all aspects of claim 1. Weis (see, e.g., Fig. 7), teaches that the bulk material 118 comprises a resin and a hardening agent (see, e.g., pars. 0016, 0087).
Regarding Claim 5, Weis and Sung teach all aspects of claim 1. Weis is silent with respect to the claim limitation that each electrically conductive core 122 has a size ranging from one hundred nanometers to one micrometer.
However, this claim limitation is merely considered a change in the size of each electrically conductive core in Weis’ device. The specific claimed size, absent any criticality, is only considered to be an obvious modification of the size of each electrically conductive core in Weis’ device, as the courts have held that changes in size without any criticality, are within the level of skill in the art. According to the courts, a particular size is nothing more than one among numerous sizes that a person having ordinary skill in the art will find obvious to provide using routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Accordingly, since the applicant has not established the criticality (see next paragraph below) of the claimed core size, it would have been obvious to one of ordinary skill in the art at the time of filing to have the claimed core size in Weis’ device.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed core size or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen size or upon another variable recited in a claim, the applicant must show that the chosen size is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding Claim 6, Weis and Sung teach all aspects of claim 1. Weis (see, e.g., Fig. 7), teaches that each electrically insulative shell 124 has a thickness ranging from 1 nm to 60 nm (see, e.g., par. 0122).
Weis does not teach that that each electrically insulative shell has a thickness ranging from one hundred nanometers to ten micrometers.
However, this claim limitation is merely considered a change in the thickness of the insulative shells in Weis’ device.
See also the comments stated above in claim 5 regarding criticality which are considered repeated here.
Regarding Claim 7, Weis and Sung teach all aspects of claim 1. Weis (see, e.g., Fig. 7), teaches that the encapsulant material 114 further comprises a thermal conductivity greater than four Watts per meter-Kelvin (see, e.g., par. 0084).
Regarding Claim 8, Weis and Sung teach all aspects of claim 1. Weis (see, e.g., Fig. 7), teaches an assembly 100 comprising a semiconductor die 112, an encapsulating material 114 including a bulk material 118 and nanoparticles 120 (see, e.g., pars. 0077, 0080, 0083, 0087). Further, Weis teaches that the function provided by the functional filling medium 114 is the provision of a pronounced heat removal capability. More specifically, when the active electronic component 112 generates heat during operation of the package 100, said heat is transferred efficiently from the electronic component 112 to the highly thermally conductive functional filling medium 114 and from there to an outside environment surrounding the package 100 (see, e.g., par. 0084).
Weis does not disclose that power measuring in excess of ten Watts can be directed or applied to the assembly without the assembly exceeding an allowable junction temperature of ten degrees Celsius.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the assembly of Weis, to improve thermal management such that it is capable of operating at power levels exceeding 10 W while maintaining junction temperature at or below 10°C. The claimed limitation represents the result of optimizing known, result-effective variables, including thermal conductivity of materials, heat dissipation pathways, and device geometry, which would have been within the routine skill in the art.
Since the material of the filling medium 114 and the size and material of the nanoparticles 120 can be changed, they can produce different results such pronounced heat removal capabilities. Thus, the materials and size of the filling medium 114 and the nanoparticles 120 are a result effective variable. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to achieve the desired assembly’s junction temperature of ten degrees Celsius, via the routine optimization process of changing the materials and sizes of the filling medium and nanoparticles, thereby obtaining the claimed invention. “a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation”. See MPEP 2144.05(II).
Further, the claimed performance is an inherent result of the modified structure. No criticality is shown for the specific thresholds (10 W / 10°C).
The claimed limitation that “power measuring in excess of ten Watts can be directed or applied to the assembly without the assembly exceeding an allowable junction temperature of ten degrees Celsius”, is merely a statement of intended operating performance that would inherently result from routine optimization of the assembly taught by Weis and does not impart patentable distinction.
Regarding Claim 9, Weis and Sung teach all aspects of claim 1. Weis is silent with respect to the claim limitation that the semiconductor die has a thickness of one-hundred fifty micrometers or less without the assembly exceeding an allowable junction temperature of ten degrees Celsius.
See also the comments stated above in claims 5 and 8 regarding criticality of thickness and result effective variables which are considered repeated here.
Regarding Claim 10, Weis (see, e.g., Fig. 7), teaches an encapsulant material 114 (see, e.g., par. 0083), comprising:
a bulk material 118 (see, e.g., par. 0087); and
thermally conductive nanoparticles 120 distributed throughout the bulk material 118, each nanoparticle 120 having an electrically insulative shell 124 and an electrically conductive core 122 (see, e.g., pars. 0087, 0122).
Weis is silent with respect to the claim limitation that the electrically conductive core comprises carbon nanotubes or graphene fragments.
Weis discloses the claimed invention except for the use of copper instead of carbon nanotubes or graphene fragments for the electrically conductive core. Sung (see, e.g., Fig. 9, par. 0074), on the other hand teaches that carbon nanotubes and copper are equivalent materials known in the art. Therefore, because these conductive materials were art-recognized equivalents at the time of the invention, one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, one of ordinary skill in the art would have found it obvious to substitute carbon nanotubes for copper since the substitution would yield predictable results. See Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. _, 82 YSPQ2d 1385 (2007).
Regarding Claim 11, Weis and Sung teach all aspects of claim 10. Weis (see, e.g., Fig. 7), teaches that the electrically insulative shell 124 comprises silica (see, e.g., pars. 0087, 0122).
Regarding Claim 13, Weis and Sung teach all aspects of claim 10. Weis (see, e.g., Fig. 7), teaches that the bulk material 118 comprises a resin and a hardening agent (see, e.g., pars. 0016, 0087).
Regarding Claim 14, Weis and Sung teach all aspects of claim 10. Weis is silent with respect to the claim limitation that each electrically conductive core 122 has a size ranging from one hundred nanometers to one micrometer.
See also the comments stated above in claim 5 regarding criticality of thickness which are considered repeated here.
Regarding Claim 15, Weis and Sung teach all aspects of claim 10. Weis (see, e.g., Fig. 7), teaches that each electrically insulative shell 124 has a thickness ranging from 1 nm to 60 nm (see, e.g., par. 0122).
Weis does not teach that that each electrically insulative shell has a thickness ranging from one hundred nanometers to ten micrometers.
However, this claim limitation is merely considered a change in the thickness of the insulative shells in Weis’ device.
See also the comments stated above in claim 5 regarding criticality which are considered repeated here.
Regarding Claim 16, Weis and Sung teach all aspects of claim 10. Weis (see, e.g., Fig. 7), teaches that the encapsulant material 114 further comprises a thermal conductivity greater than four Watts per meter-Kelvin (see, e.g., par. 0084).
Response to Arguments
Applicant’s arguments filed on 08/12/2026 with respect to the rejection of claims 1 and 10 have been fully considered but are moot because in view of the new grounds of rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nelson Garces whose telephone number is (571) 272-8249. The examiner can normally be reached on Mon-Fri 9:00 AM-5:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy can be reached on (571) 272-1705.
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/Nelson Garces/Primary Examiner, Art Unit 2814
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