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 .
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/20/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Claims 12-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/21/2026.
Applicant’s election without traverse of Invention I (claims 1-11) in the reply filed on 07/21/2026 is acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites an integrated passive device, IPD,… The Office suggests amending the claim to read “Integrate Passive Device (IPD)”… for clarity of record and to clearly link the Integrate Passive Device to the acronym IPD. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1-6 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bollinger et al. (CN202211452662.3 (PG Pub2024/0171132 is used as the English translation).
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Regarding claim 1, refer to Fig. 1 and primarily the Examiner’s mark-up of Fig. 4c provided above, Bollinger teaches a power amplifier die (see claim limitations below), comprising:
a substrate 406;
a transistor 441 formed on the substrate (see Fig. 4c);
an integrated passive device, IPD 478, formed on the substrate adjacent to the transistor (see Fig. 4c); and
a wire bond 420 electrically connecting the transistor and the IPD on the substrate (see Fig. 4c).
Regarding claim 2, refer to the Examiner’s mark-up of Fig. 4c provided above, Bollinger teaches
478 the IPD comprises a capacitor (para [0050]).
Regarding claim 3, refer to the Examiner’s mark-up of Fig. 4c provided above, Bollinger teaches
the IPD 478 comprises at least a portion of an input match for the transistor and the wire bond comprises an inductor of at least the portion of the input match (para [0102-0107]).
Regarding claim 4, refer to the Examiner’s mark-up of Fig. 4c provided above, Bollinger teaches at least a portion of the wire bond 420 has a height (distance from 406 to wire apex) that is adjustable so as alter an inductance of the input match.
The recited …“that is adjustable so as alter an inductance of the input match.” (i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is having a wire bond, which Bollinger clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.").
Regarding claim 5 and claim 6, refer to the Examiner’s mark-up of Fig. 4c provided above, Bollinger teaches Regarding claim 5) a portion of the substrate (annotated “portion”) positioned between the transistor 441 and the IPD 478; (Regarding claim 6) wherein the portion of the substrate comprises an unsawn portion of the substrate (i) between the transistor and the IPD and (ii) positioned beneath the wire bond. 420 (see Fig. 4c).
Regarding claim 11, refer to the Examiner’s mark-up of Fig. 4c provided above, Bollinger teaches the power amplifier die (see claim 1) is configured to operate above about 3 GHz.
The recited “configured to operate above about 3 GHz” (i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is having the structure outlined in claim 1, which Huang clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.").
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 (i.e., changing from AIA to pre-AIA ) 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, 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
2. Claim(s) 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bollinger, as applied to claim 1 above, and further in view of Huang et al. (PG Pub 2020/0035779; hereinafter Huang).
Regarding claim 9, refer to the Examiner’s mark-up of Fig. 4c provided above, Although, Bollinger teaches the substrate, Bollinger does not explicitly teach the material composition of the substrate as comprising a semiconductor substrate.
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In the same field of endeavor, refer to Fig. 1-provided above, Huang teaches a semiconductor device 100 comprising: a substrate 112/120; wherein the substrate comprises a semiconductor material semiconductor substrate (para [0017]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the substrate of Bollinger for that of Huang, for the purpose of choosing a suitable and well recognized substrate material composition.
Regarding claim 10, refer to the Examiner’s mark-up of Fig. 4c provided above, Although, Bollinger teaches the substrate, Bollinger does not explicitly teach the material composition of the substrate as comprising one of silicon carbide (SiC), silicon (Si), and gallium arsenide (GaAs).
In the same field of endeavor, refer to Fig. 1-provided above, Huang teaches a semiconductor device 100 comprising: a substrate 112/120; wherein the substrate comprises one of silicon carbide (SiC), silicon (Si), and gallium arsenide (GaAs) (para [0017]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the substrate of Bollinger for that of Huang, for the purpose of choosing a suitable and well recognized substrate material composition.
Prior Art
3. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
a. McLaughlin et al. (PG Pub 2004/0241913) teaches a power amplifier.
Allowable Subject Matter
4. Claims 7-8 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 7 contains allowable subject matter, because the prior art of record, either singularly or in combination, fails to disclose or suggest, in combination with the other elements in claim 7, the unsawn portion of the substrate between the transistor and the IPD has a width in a range between about 2 mils and less than 10 mils.
Claim 8 contains allowable subject matter, because the prior art of record, either singularly or in combination, fails to disclose or suggest, in combination with the other elements in claim 8, the unsawn portion of the substrate between the transistor and the IPD has a width in a range between about 0 mils and about 2 mils.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christina A Sylvia whose telephone number is (571)272-7474. The examiner can normally be reached on 8am-4pm (M-F).
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, Marlon Fletcher can be reached on 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA A SYLVIA/Examiner, Art Unit 2817 /MARLON T FLETCHER/Supervisory Primary Examiner, Art Unit 2817
