Prosecution Insights
Last updated: April 19, 2026
Application No. 18/570,678

SEMICONDUCTOR DEVICE

Non-Final OA §103§112
Filed
Dec 15, 2023
Examiner
BRADFORD, PETER
Art Unit
2897
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Mitsubishi Electric Corporation
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
84%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
586 granted / 733 resolved
+11.9% vs TC avg
Minimal +4% lift
Without
With
+4.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
42 currently pending
Career history
775
Total Applications
across all art units

Statute-Specific Performance

§101
1.2%
-38.8% vs TC avg
§103
41.1%
+1.1% vs TC avg
§102
24.3%
-15.7% vs TC avg
§112
32.5%
-7.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 733 resolved cases

Office Action

§103 §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 . Specification The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The examiner proposes: SEMICONDUCTOR PACKAGE WITH HOLE TO CONNECT RESIN ON THE FRONT AND BACK 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 applicant regards as his invention. Claims 9-27 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. Claim 9 recites “[a] semiconductor device … wherein the mold material has a portion on the front side of the board and a portion on the back side thereof that are interconnected through at least one hole provided in the board; and wherein the hole is created on a dicing line.” This creates confusion about what is being claimed. Is a finished, singulated semiconductor device recited, or is an unsingulated substrate claimed? As the hole is provided on the dicing line, it is present in the unsingulated substrate, but after dicing, it is not clear there is still a hole, and if there is, it would be one small piece of the edge of a hole rather than a hole per se. See e.g. FIG. 7; after dicing, the holes on the dicing line will no longer exist (as they will have been cut away during dicing), or they will be small arcs of the previous hole. It is not clear from the claim language which stage of manufacture of the device is claimed. For present purposes the examiner will interpret it as either stage of manufacturing of the device. Claims 11 and 12 recite that “the hole is configured to cover a corner portion of the board that is rectangular”. As the hole is recited as being through the board, it is not clear what it means for the hole to “cover” a particular portion. The remaining claims are rejected based on their dependencies. 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. Claims 9-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sono, US 5,920,117 A, in view of Hatanaka, JP 2001-177159 A, and Hasuo, JP 2001-196396 A. Claim 9: Sono discloses a board (11); a cavity therein (holding chip 12) having an opening created on a front side of a central portion of the board; a back-side conductor (13) that is formed for the board to provide a bottom face of the cavity; a semiconductor chip (12) mounted on the back-side conductor and a mold material (15) that covers the semiconductor chip and the board; wherein the mold material has a portion on the front side of the board and a portion on the back side thereof that are interconnected through at least one hole (27) provided in the board. PNG media_image1.png 406 790 media_image1.png Greyscale Sono does not disclose that the hole is created on a dicing line. However, through holes that pass resin that are formed on dicing lines were known in the art. See Hatanaka, which shows holes 23 formed on dicing lines (FIG. 4), resin 30 formed on device and flowing into the holes (FIGS. 5A and 6), and then dicing along the dicing lines (FIGS. 5B and 6). PNG media_image2.png 354 620 media_image2.png Greyscale See also Hasuo, which discloses openings 34 on dicing line 2 (“a plurality of through holes 34 are formed on the dicing line 2”, fourth page of attached translation) which are filled with resin (“the resin is filled also in the through hole 34”, fourth page of attached translation). PNG media_image3.png 446 596 media_image3.png Greyscale It would have been obvious to have had holes on the dice line in Sono as a known structure that passes resin. Hatanaka states that “Since the resin 7 is filled in the portion of the substrate material 21 that was left as a trace of the through hole 23, the front electrode 3a covering the resin 7 is lined with the resin 7 and has sufficient strength.” (7th page of the attached translation.) It would have been obvious to do it to achieve that benefit. Note that the mold material (Hatanaka 25) has a portion on the front side of the board and a portion on the back side thereof that are interconnected through at least one hole provided in the board (FIG. 4C). PNG media_image4.png 190 331 media_image4.png Greyscale Claim 10: in Sono in view of Hatanaka, the hole is on the dicing line, and so would be away from all of the back-side conductors, which are in the centers of the chips. Claims 11 and 12: the hole is configured to cover a corner portion of the board that is rectangular. Hasuo FIG. 5, holes 34B cover the corners. The board (and its corners) in both Sono and Hasuo are rectangular. PNG media_image5.png 511 500 media_image5.png Greyscale Claims 13-15: Sono discloses another hole (27, FIG. 5) is further provided adjacent to a bottom portion of the cavity. PNG media_image6.png 730 616 media_image6.png Greyscale Claims 15-18: Hasuo FIG. 5 discloses another hole that is further created in an area near a corner portion of the board that is rectangular. There are holes at each of the corners, and thus the hole at any other corner can be the “another hole” of claim 15. PNG media_image7.png 356 483 media_image7.png Greyscale Claim 19-21 the hole has a shape in cross-section that is a circular shape, a square shape, a cross shape or an L-shape (L-shape and cross-shape, Hasuo FIG. 5). Claims 22-24: the hole has a shape in cross-section that is a slit-like shape (Hasuo FIGS. 2, 6). PNG media_image8.png 216 210 media_image8.png Greyscale Potentially Allowable Subject Matter If the 112 rejections above are addressed, it appears claims 25-27 would be 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 examiner did not find the through passage that horizontally communicates the hole with the cavity formed inside the board, in combination with all the other claim limitations. Note: “horizontally” is interpreted to mean along a direction in the major surface of the claimed board. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed in the attached Notice of References Cited: Ohta, US 20120049882 A1, with a hole having resin on a dicing line. Terashima, US 6,329,228 B1, showing holes 15 connecting resin 20 on the front and back. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER BRADFORD whose telephone number is (571)270-1596. The examiner can normally be reached 10:30-6:30. 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, Jacob Choi can be reached at 469.295.9060. 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. /PETER BRADFORD/Primary Examiner, Art Unit 2897
Read full office action

Prosecution Timeline

Dec 15, 2023
Application Filed
Mar 09, 2026
Non-Final Rejection — §103, §112 (current)

Precedent Cases

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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
80%
Grant Probability
84%
With Interview (+4.1%)
2y 8m
Median Time to Grant
Low
PTA Risk
Based on 733 resolved cases by this examiner. Grant probability derived from career allow rate.

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