Prosecution Insights
Last updated: April 19, 2026
Application No. 18/545,467

Semiconductor Device and Method of Forming Protective Layer on Substrate to Avoid Damage During Encapsulation

Non-Final OA §102§112
Filed
Dec 19, 2023
Examiner
LEE, EUGENE
Art Unit
2815
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Jcet Stats Chippac Korea Limited
OA Round
1 (Non-Final)
82%
Grant Probability
Favorable
1-2
OA Rounds
2y 9m
To Grant
87%
With Interview

Examiner Intelligence

Grants 82% — above average
82%
Career Allow Rate
728 granted / 891 resolved
+13.7% vs TC avg
Minimal +5% lift
Without
With
+4.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
39 currently pending
Career history
930
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
41.1%
+1.1% vs TC avg
§102
25.6%
-14.4% vs TC avg
§112
24.5%
-15.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 891 resolved cases

Office Action

§102 §112
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. Election/Restrictions Applicant's election with traverse of Species III (i.e. FIG. 3d, claims 1-3, 5-10, 12, and 13) in the reply filed on 3/11/26 is acknowledged. The traversal is on the ground(s) that the Examiner provides absolutely no explanation or basis for fi n ding multiple independent or distinct species. This is not found persuasive because the Examiner showed how each of the species are exclusive to each other regarding the protective layer being same size, lesser size, and greater size than the width of the saw street. The species are distinct from each other, and the applicant has not provide d reasons why the relative sizes of the protective layer and saw street as stated in the restriction are not distinct species. In the response fi le d 3/11/26, the applicant even states that Species I, II, and III are alternative embodiments of each other . Therefore, claim s 4, and 11 are withdrawn as they are directed to the other species ; however, applicant is reminded that any claims that are dependent on an allowed claim are subject to rejoinder. Also, claims 14-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made in the reply filed on 3/11/26. The requirement is still deemed proper and is therefore made FINAL. Drawings The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: element 128 . Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 1 thru 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In line 3 of claim 1, the applicant states “a protective layer formed over a saw street”; however, the limitation of a “saw street” appears to be a feature of an intermediate product during the method steps for forming a final device of a single semiconductor package. For the sake of compact prosecution, the Examiner is examining the limitation of “a saw street”; however, further clarification is required as this limitation appears to be an intermediate product in the steps of process while the claims are directed to a product . Further, s ee, for example, FIG. 6a wherein the applicant shows the saw street being cut to form the actual final product including a package 180a or a package 180b . In line 3 of claim 1 , the limitation “a protective layer formed over a saw street” is unclear since, see, for example, FIG. 6a, the applicant shows the saw street being formed over the protective layer 134, rather than the opposite that is stated in the limitation “protective layer formed over a saw street.” The same applies to claims 3, 9, and 10, which contain a similar limitation. Appropriate clarification and/or correction are required. 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 view of the 112 rejection, c laim(s) 1 thru 3, 5 thru 10, 12, and 13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Huang US 2014/0203416 A1 . Huang discloses (see, for example, FIG. 7A-8B ) a semiconductor device comprising a substrate 108 , protective layer 110 , saw street 1 22 , electrical component 1 06 , and encapsulant 1 14 . Regarding the limitation “the protective layer protects the substrate during encapsulation”, Huang discloses (see, for example, FIG. 7A-8B ) the protective layer 110 protecting the substrate 108 during encapsulation of the encapsulant 1 14 even though this is a product-by-process limitation. Regarding claims 2, and 8, see, for example, FIG. 7A-8B wherein Huang discloses a connector 126b over the surface of the substrate 108 . Regarding claims 3, and 10, see, for example, FIG. 7A-8B wherein Huang discloses the protective layer 110 extends over a width of the saw street 122 . Regarding claims 5, and 12, see, for example, FIG. 7A-8B wherein Huang discloses the protective layer 110 extends greater than a width of the saw street 1 22 . Regarding claims 6, and 13, see, for example, FIG. 7A-8B wherein Huang discloses a shielding layer 1 18b formed over the encapsulant 1 14 . Regarding claim 7, see, for example, FIG. 7A-8B wherein Huang discloses a semiconductor device comprising a substrate 108 , protective layer 110 , electrical component 1 06 , and encapsulant 1 14 . Regarding the limitation “the protective layer protects the substrate during encapsulation”, even though Huang still discloses (see, for example, FIG. 7A-8B) the protective layer 110 protecting the substrate 108 during encapsulation of the encapsulant 1 14 , this is a product-by-process limitation. Regarding claim 9, see, for example, FIG. 7A-8B wherein Huang discloses the protective layer 110 being formed over a saw street 122 . Product-by-Process Limitations 5. While not objectionable, the Office reminds Applicant that “product by process” limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao , 190 USPQ 15 at 17 (footnote 3). See also, In re Brown , 173 USPQ 685; In re Luck , 177 USPQ 523; In re Fessmann , 180 USPQ 324; In re Avery , 186 USPQ 161; In re Wethheim , 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe , 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or otherwise . Note that applicant has the burden of proof in such cases, as the above case law makes clear. Thus, no patentable weight will be given to those process steps which do not add structural limitations to the final product. INFORMATION ON HOW TO CONTACT THE USPTO Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT EUGENE LEE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1733 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 730-330 PM . 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, FILLIN "SPE Name?" \* MERGEFORMAT JOSHUA BENITEZ can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-1435 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Eugene Lee March 23, 2026 /EUGENE LEE/ Primary Examiner, Art Unit 2815
Read full office action

Prosecution Timeline

Dec 19, 2023
Application Filed
Mar 29, 2026
Non-Final Rejection — §102, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
82%
Grant Probability
87%
With Interview (+4.9%)
2y 9m
Median Time to Grant
Low
PTA Risk
Based on 891 resolved cases by this examiner. Grant probability derived from career allow rate.

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