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 1-8 in the reply filed on July 27th, 2026, are acknowledged. Claim 1 has been amended. Claims 9-18 have been withdrawn from consideration. Claims 1-18 are pending.
Action on merits of claims 1-8 as follows.
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.
Claim 1 is rejected under 35 U.S.C. 103 103 as being unpatentable over Siepe (US 2011/0316160, hereinafter as Siep ‘160) in view of Otremba ()US 2013/0200532, hereinafter as Otre ‘532).
Regarding Claim 1, Siep ‘160 teaches a bonding structure for connecting a chip and a metal material, comprising:
a substrate (Fig. 6, (16); [0021] and [0032]) having an upper surface, wherein the upper surface includes a first metal pad (46; [0032]) and a second metal pad (46; [0032]);
a chip (11; [0029]) disposed on the first metal pad;
a metal member (47; [0029]) disposed above the chip (11);
at least one metal wire (42; [0029]) having a first end and a second end, wherein the first end is connected to an upper surface of the metal member (47), and the second end is connected to the second metal pad (46); and
an alloy connection layer (49a; [0029]) connected between the metal member and the chip, and covering at least a part of a lower surface of the metal member (see Fig. 6).
Thus, Siep ‘160 is shown to teach all the features of the claim with the exception of explicitly the limitations: “diffusively soldering”.
Otre ‘532 teaches diffusively soldering (see para. [0001], [0049] and [0053]).
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 Siep ‘160 by having diffusively soldering in order to provide high yield at low expenses (see para. [0002]).
PNG
media_image1.png
302
482
media_image1.png
Greyscale
Fig. 6 (Siep ‘160)
Claims 2, 4-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Siep ‘160 and Otre ‘532 as applied to claim 1 above, and further in view of Heinrich (US 2016/0358890, hereinafter as Hein ‘890).
Regarding Claim 2, Siep ‘160 teaches the metal member (47) is made of a copper foil (see para. [0031]); and the alloy connection layer (49a) is made of Ti, Ti/TiN, Ta, TaN, Ta/TaN, W, Ti/W, VaTi, VTiW, VTiN, Al/Ti/W, CrNi, CrVTi or other combinations (see para. [0029]).
Thus, Siep ‘160 is shown to teach all the features of the claim with the exception of explicitly the limitations: “the alloy connection layer is made of Au-Sn alloy”.
Hein ‘890 teaches the alloy connection layer (40; [0020]) is made of Au-Sn alloy (SnAu).
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 Siep ‘160 and Otre ‘532 by having the alloy connection layer is made of Au-Sn alloy for the purpose of improving distribution of molten solder during the reflow process (see para. [0031]) as suggested by Hein ‘890.
Further, it has been held to be within the general skill of a worker in the art to select a Au-Sn alloy for the connection layer 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 select Au-Sn alloy for the connection layer in order to improve the connectivity of the semiconductor device.
Regarding Claim 4, Siep ‘160 teaches a thickness of the alloy connection layer (49) equal or less than 1 µm.
Thus, Siep ‘160, Otre ‘532 and Hein ‘890 are shown to teach all the features of the claim with the exception of explicitly the limitations: “a thickness of the alloy connection layer ranges between 3 µm and 5 µm”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a thickness of the alloy connection layer ranges between 3 µm and 5 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The claim would have been obvious in the absence of a showing that the claimed range(s) achieve unexpected results relative to the prior art range. In re Woodruff, 16 USPQ2d 1935, 1937 (Fed. Cir. 1990). See also In re Huang, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996) (claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art). See also In re Boesch, 205 USPQ 215 (CCPA) (discovery of optimum value of result effective variable in known process is ordinarily within skill of art) and In re Aller, 105 USPQ 233 (CCPA 1955) (selection of optimum ranges within prior art general conditions is obvious).
Regarding Claim 5, Siep ‘160 teaches the alloy connection layer (49a) is located at the center of the lower surface of the metal member (47), and an orthogonal projection of the alloy connection layer (49) that is projected onto the first metal pad is equal to an orthogonal projection of the metal member that is projected on to the first metal pad.
Thus, Siep ‘160, Otre ‘532 and Hein ‘890 are shown to teach all the features of the claim with the exception of explicitly the limitations: “an orthogonal projection of the alloy connection layer that is projected onto the first metal pad is smaller than an orthogonal projection of the metal member that is projected on to the first metal pad”.
However, it has been held to be within the general skill of a worker in the art to select an orthogonal projection of the alloy connection layer that is projected onto the first metal pad is smaller than an orthogonal projection of the metal member that is projected on to the first metal pad on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. A person of ordinary skills in the art is motivated to select an orthogonal projection of the alloy connection layer that is projected onto the first metal pad is smaller than an orthogonal projection of the metal member when this allows a good flow with the other steps in the fabrication process.
PNG
media_image2.png
18
19
media_image2.png
Greyscale
Regarding Claim 6, Siep ‘160 teaches the alloy connection layer includes a plurality of alloy piece layers that are separated from each other (49a/49b), and the plurality of alloy piece layers are distributed on the lower surface of the metal member (47) (see Fig. 6).
Regarding Claim 8, Siep ‘160, Otre ‘532 and Hein ‘890 are shown to teach all the features of the claim with the exception of explicitly the limitations: “an orthogonal projection of the metal member that is projected onto the first metal pad is larger than an orthogonal projection of the chip that is projected onto the first metal pad”.
However, it has been held to be within the general skill of a worker in the art to select an orthogonal projection of the metal member that is projected onto the first metal pad is larger than an orthogonal projection of the chip that is projected onto the first metal pad on the basis of it suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. A person of ordinary skills in the art is motivated to select an orthogonal projection of the metal member that is projected onto the first metal pad is larger than an orthogonal projection of the chip that is projected onto the first metal pad when this allows a good flow with the other steps in the fabrication process.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Siep ‘160, Otre ‘532 and Hein ‘890 as applied to claim 2 above, and further in view of Erchak (US 2009/0230545, hereinafter as Erch ‘545).
Regarding Claim 3, Hein ‘890 teaches the alloy connection layer (40; [0020]) is made of Au-Sn alloy (SnAu).
Thus, Siep ‘160, Otre ‘532 and Hein ‘890 are shown to teach all the features of the claim with the exception of explicitly the limitations: “the alloy connection layer is made by electroplating or plasma evaporation”.
Erch ‘545 teaches the AuSn bonding layer is made by plasma evaporation (sputtered; [0173]).
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 Siep ‘160, Otre ‘532 and Hein ‘890 by having the alloy connection layer is made by plasma evaporation for the purpose of improving the ohmic contact (see para. [0173]) as suggested by Erch ‘545.
Further, it has been held to be within the general skill of a worker in the art to select the electroplating or plasma evaporation methods for forming the connection layer 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 select the electroplating or plasma evaporation methods for forming the connection layer in order to allow a good flow with the other steps in the fabrication process.
. Product by process limitation:
The expression “is made by electroplating or plasma evaporation”” 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Siep ‘160 and Otre ‘532 as applied to claim 1 above, and further in view of Yu (US 2013/0087908, hereinafter as Yu ‘908).
Regarding Claim 3, Siep ‘160 teaches the alloy connection layer 949a) and the metal member (47).
Thus, Siep ‘160 and Otre ‘532 are shown to teach all the features of the claim with the exception of explicitly the limitations: “the alloy connection layer completely covers a side surface and the lower surface of the metal member”.
Yu ‘908 teaches the alloy connection layer (seed layer, Fig. 1, (110); [0016]) completely covers a side surface and the lower surface of the metal member (metal layer, Fig. 1, (112); [0016] and [0036]).
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 Siep ‘160 and Otre ‘532 by having the alloy connection layer completely covers a side surface and the lower surface of the metal member for the purpose of improving the device performance and reliability (see para. [0003]) as suggested by Yu ‘908.
Examiner’s Note
Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants' definition which is not specifically set forth in the claims. See MPEP 2111, 2123, 2125, 2141.02 VI, and 2182.
Examiner has cited particular paragraph numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. See MPEP 2141.02 VI.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Response to Arguments
Applicant’s arguments with respect to claims 1-8, filed on July 27th, 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