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
Applicants’ response of 05/12/2026 has been entered in the record and considered. With respect to the rejection claims 35 USC 102 (a)(1) is withdrawn in view of applicants’ amendments. The following new rejection to claims 1, 3-5 and 8 are made under 35 USC 103. Claims 1-6 and 8-10 are under consideration. Claims 2, 6 and 9-10 are withdrawn. Claims 1, 3-5 and 8 are rejected.
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.
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.
Claims 1, 3-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub # 2003/0137056 to Taniguchi et al. (Taniguchi).
Regarding independent claim 1, Taniguchi discloses a semiconductor substrate (Fig. 6) comprising a through electrode (electrode 20 buried in the through hole 40) including:
an upper hole portion in a forward tapered shape (see Examiner’s markup below);
a lower hole portion in a reverse tapered shape (see Examiner’s markup below); and
a step at a boundary between the upper hole portion and the lower hole portion (see Examiner’s markup below) (see also at least ¶0092).
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Taniguchi discloses wherein the boundary or the step (see Examiner’s markup) between the upper hole portion and the lower hole portion (see Examiner’s markup) is disposed at a position.
The written description of Taniguchi does not specifically disclose “a depth direction of 20% to 50% from an opening surface with respect to a depth of the through electrode”. However, although proportions of features in a drawing are not evidence of actual proportions when drawings are not to scale, the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977) [MPEP 2125 (II)]. At least Figure (6) of Taniguchi appears to fall within the claimed range or, at the very least, is close to falling within the claimed range. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie base of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946) [MPEP 2144.05]. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Furthermore, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). After KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to determine the optimum or workable ranges of a variable [MPEP 2144.05(II)(B)]. In the instant case, the only difference between the boundary or the step position of Taniguchi and that of the claims is the claimed range of the depth direction. Because Taniguchi depicts a boundary or step, one skilled in that art would recognize that there are a finite number of identified predictable solutions (i.e. the depth direction must be between 0% and 100%°). As such, absent criticality of the claimed rage, it would have been obvious to one of ordinary skill in the art to pick any the depth direction between 0% and 100%°. Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.") [MPEP 2144.05(II)].
Applicant has NOT demonstrated any criticality to establish that the claimed depth direction of the boundary or step position would perform differently than a prior art device having depth direction of the boundary or step position of the claimed range (see Taniguchi, fig. 6).
Regarding independent claim 3, Taniguchi discloses a semiconductor substrate (Fig. 6: 16) comprising a through electrode (electrode 20 buried in the through hole 40) including:
an upper hole portion in a forward tapered shape (see Examiner’s markup below);
a lower hole portion in a reverse tapered shape (see Examiner’s markup below); and
a boundary between the upper hole portion and the lower hole portion (see Examiner’s markup below) (see also at least ¶0092).
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Taniguchi discloses wherein the boundary or the step (see Examiner’s markup) between the upper hole portion and the lower hole portion (see Examiner’s markup) is disposed at a position.
The written description of Taniguchi does not specifically disclose “a depth direction of 20% to 50% from an opening surface with respect to a depth of the through electrode”. However, although proportions of features in a drawing are not evidence of actual proportions when drawings are not to scale, the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977) [MPEP 2125 (II)]. At least Figure (6) of Taniguchi appears to fall within the claimed range or, at the very least, is close to falling within the claimed range. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie base of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946) [MPEP 2144.05]. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Furthermore, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). After KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to determine the optimum or workable ranges of a variable [MPEP 2144.05(II)(B)]. In the instant case, the only difference between the boundary or the step position of Taniguchi and that of the claims is the claimed range of the depth direction. Because Taniguchi depicts a boundary or step, one skilled in that art would recognize that there are a finite number of identified predictable solutions (i.e. the depth direction must be between 0% and 100%°). As such, absent criticality of the claimed rage, it would have been obvious to one of ordinary skill in the art to pick any the depth direction between 0% and 100%°. Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.") [MPEP 2144.05(II)].
Applicant has NOT demonstrated any criticality to establish that the claimed depth direction of the boundary or step position would perform differently than a prior art device having depth direction of the boundary or step position of the claimed range (see Taniguchi, fig. 6).
Regarding claim 4, Taniguchi discloses that the through electrode is in a glass substrate (Fig. 6: 16) (¶0084).
Taniguchi fails to explicitly disclose wherein the through electrode is in a silicon substrate.
Taniguchi discloses in a different embodiment (Fig. 1: 10 and ¶0028) that the through electrode is in a silicon substrate.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have provided the glass substrate of embodiment of Fig. 6 of Taniguchi to be replaced with the silicon substrate of different embodiment (Fig. 1) of Taniguchi since it has been held that selecting a known material on the basis of its suitability for the intended use involves only routine skill in the art MPEP 2144.07. Additionally, such a modification prevents the generation of leak current (¶0073).
Regarding claim 5, Taniguchi discloses wherein the through electrode is in an interlayer film (Fig.6: 16) having an insulating property (glass 16 is an insulating material). Under the broadest reasonable interpretation, an “interlayer film having an insulating property” encompasses any dielectric/insulating layer or film in which the through electrode opening is formed. Glass is a well-known electrical insulating (dielectric) material, and therefore the glass substrate of Taniguchi inherently possesses the claimed “insulating property.”
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub # 2003/0137056 to Taniguchi et al. (Taniguchi) in view of US Pub # 2001/0042637 to Hirose et al. (Hirose).
Regarding claim 8, Taniguchi discloses a semiconductor substrate structure including a substrate such as glass (Fig. 6) and/or silicon (Fig.5: 36) and a through electrode (Fig. 6: electrode 20 buried in the through hole 40) formed by boring or forming an opening through the substrate and filling the opening with a conductive material (see, e.g., Fig.1: 20). Thus, Taniguchi teaches a through electrode formed in a substrate having an insulating property.
However, Taniguchi does not explicitly disclose that the interlayer film includes a resin of one of an organic material or an inorganic material, and the one of the organic material or the inorganic material has photosensitivity, as recited in claim 8.
Hirose teaches forming interlayer insulating films using a photosensitive resin material (Fig. 3L: 20 and ¶0319) and forming through holes/vias (20a) in the interlayer insulating resin (20) by exposure and development processes (see, e.g., ¶0319 and Figs. 3k-3L). Hirose expressly describes that the interlayer insulating layer is a resin having photosensitivity and provides electrical insulation while permitting photolithographic patterning of openings.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form the insulating interlayer film of Taniguchi using the photosensitive resin interlayer insulating film taught by the Hirose publication because the use of photosensitive resin dielectric films for interlayer insulation and via formation was well known and provides the predictable advantages of electrical insulation, process compatibility with photolithography, and facilitated formation of through openings. Substituting or incorporating such a known dielectric resin film into the structure of Taniguchi would have been a routine design choice yielding no more than predictable results.
Response to Arguments
Applicant's arguments (see page 7-11) filed 05/12/2026 have been fully considered but they are not persuasive
Applicant’s arguments are not persuasive. Applicant argues that Taniguchi fails to teach the recited boundary or step being disposed at a position in a depth direction of 20% to 50% from the opening surface with respect to the depth of the through electrode and further argues that paragraph ¶0043 demonstrate criticality of the claimed range.
In response, however, the rejection does not rely on extracting precise numerical dimensions from Taniguchi’s drawings. Rather, Taniguchi is relied upon for teaching the same stepped through-electrode structure including an upper hole portion, a lower hole portion, and a boundary therebetween. The presently claimed percentage limitation specifies the relative placement of an already disclosed structural feature within the through-electrode depth.
Selection of the relative location of the boundary constitutes optimization of a known structural parameter affecting the geometry and resulting process characteristics of the stepped through-electrode. Further, Applicant’s cited paragraphs 0043 discuss the relationship between the relative boundary position and different defect occurrence, including increased bubble formation at lower values and increased development residue at higher values, and identify a desirable operating region. However, such disclosure does not sufficiently establish criticality of the claimed range because it does not demonstrate that the claimed endpoints represent threshold values or produce unexpected results relative to nearby values outside the claimed range. Rather, the disclosure reflects identifying a preferred operating region based on observed defect occurrence, which is consistent with optimization of a known variable by one of ordinary skill in the art. Accordingly, the Examiner maintains that it would have been obvious to select the recited relative boundary position for the known stepped through-electrode structure.
Accordingly, Applicant has not persuasively shown that the recited 20% - 50% range produces results sufficient to overcome the prima facie case of obviousness.
It is for the above discussed reasons that the rejection as applied is considered proper.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub # 2015/0179545 to Jeong et al., US Pub # 2015/0076695 to Cheng et al.
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 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 MOHSEN AHMADI whose telephone number is (571)272-5062. The examiner can normally be reached M-F: 9:00am-5:00pm.
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/MOHSEN AHMADI/Primary Examiner, Art Unit 2896
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