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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to because of the following:
In Figure 4, delete reference number 6 and its reference line. Lead frame 6 is not present in this figure. Compare with Figure 1.
PNG
media_image1.png
473
850
media_image1.png
Greyscale
PNG
media_image2.png
479
818
media_image2.png
Greyscale
In Figure 5, 3b should be 3c. Compare with Figure 2.
PNG
media_image3.png
646
639
media_image3.png
Greyscale
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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: 6f1 in Figure 10; 32e in Figure 13.
PNG
media_image4.png
413
808
media_image4.png
Greyscale
PNG
media_image5.png
417
708
media_image5.png
Greyscale
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Please add the subject matter of claim 10 in the specification.
Claim Rejections - 35 USC § 112
As a preliminary note, the Office considered Section 112(a) scope of enablement and Section 112(b) indefiniteness rejections directed to claims 2 and 5 specifically, and claim 2’s dependent claims for their dependency from claim 2, because claims 2 and 5 require thicknesses of “less than 0.25 mm”, which could on its face include zero and negative numbers. However, the Office decided against the rejections because the thicknesses are associated with conductive elements, and by definition, in order to be conductive, the conductive elements are required to have a thickness greater than zero that is capable of conducting electricity. For these reasons, these claims were not rejected under Section 112.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for distances near but greater than 5 mm, does not reasonably provide enablement for extreme distances, such as a meter, a kilometer, etc. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding claim 10, which depends from claim 1: Claim 1 requires a wiring member that includes a first portion bonded to the conductive region of the conductive element, a second portion fixed to the fixing region of the fixing element, and an inclined portion between the first portion and the second portion, the inclined portion being elastically deformable. Claim 10, which depends from claim 1, requires a distance between the first portion and the second portion to be greater than 5 mm in plan view of the electronic device. This distance includes distances that are near 5 mm but slightly greater, as well as distances of a meter, a kilometer, and greater. While distances that are near 5 mm but slightly greater are enabled, distances of a meter, a kilometer, and greater are not enabled. For these reasons, claim 10 is rejected for lack of enablement for the full scope of the claim.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
(A) The breadth of the claims: As discussed above, the breadth of the claims encompasses distances that are near 5 mm but slightly greater, as well as distances of a meter, a kilometer, and greater.
(B) The nature of the invention: The invention is a semiconductor package in which a conductive element and fixing element are joined by bonding to a wiring member, the wiring member having a first portion bonded to a conductive region of the conductive element and a second portion bonded to a fixing region of the fixing element.
(C) The state of the prior art: The prior art is silent as to the dimension of the fixing element, but given the scale of the device, a distance in the range of millimeters, possibly centimeters, would be expected.
(D) The level of one of ordinary skill: One having ordinary skill in the art would have a bachelor’s degree in electrical engineering or materials science and 5 years of experience in the semiconductor industry.
(E) The level of predictability in the art: The level of predictability is high for distances of near 5 mm but slightly greater, but low for extreme distances due to sagging and weight of the wiring member.
(F) The amount of direction provided by the inventor: The inventor provides no information in the specification itself other than referring to semiconductor chips 4 and 5 being at least 5 mm apart. See applicants’ specification page 12, paragraph 33.
(G) The existence of working examples: The disclosure has no working examples.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Given the information provided by the inventor, the state of the prior art, and the scope of the claims, the quantity of experimentation is undue. For these reasons, claim 10 is rejected for lack of enablement for the full scope of the claim.
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.
Claim 10 is 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.
Regarding claim 10, which depends from claim 1: As discussed above, claim 1 requires a wiring member that includes a first portion bonded to the conductive region of the conductive element, a second portion fixed to the fixing region of the fixing element, and an inclined portion between the first portion and the second portion, the inclined portion being elastically deformable. Claim 10, which depends from claim 1, requires a distance between the first portion and the second portion to be greater than 5 mm in plan view of the electronic device. Claim 10 does not provide an upper limit to the distance. Because there is no upper limit on the distance, claim 10 is rejected as indefinite.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsuda, U.S. Pat. Pub. No. 2022/0301999, Figures 5, 1, 3, and 4.
Tsuda Figure 5:
PNG
media_image6.png
281
423
media_image6.png
Greyscale
Tsuda, Figure 1:
PNG
media_image7.png
297
409
media_image7.png
Greyscale
Tsuda, Figures 3, 4:
PNG
media_image8.png
1066
426
media_image8.png
Greyscale
Regarding claim 1: Tsuda Figure 5, which incorporates by reference Tsuda Figures 1, 3, and 4, discloses an electronic device, comprising: a conductive element (7) having a conductive region (9) on a front surface thereof; a fixing element (5) having a fixing region on an outside surface thereof, the fixing element (5) being located apart from the conductive element (7) in a plan view of the electronic device; and a wiring member (17) having a flat plate shape, the wiring member (17) including: a first portion bonded to the conductive region (9) of the conductive element (7), a second portion fixed to the fixing region of the fixing element (5), and an inclined portion between the first portion and the second portion, the inclined portion being elastically deformable, wherein in a side view of the electronic device, the conductive region (9) of the conductive element (7) and the fixing region of the fixing element (5) are at different heights in a thickness direction of the electronic device. Tsuda specification ¶¶ 25-29, 22-24, 16-20. To the extent that Tsuda Figure 5 does not incorporate by reference Tsuda Figures 1, 3, and 4, one having ordinary skill in the art at a time before the effective filing date would be motivated to modify Tsuda Figure 5 to include the missing elements from Tsuda Figures 1, 3, and 4 because the modification would have involved the substitution of an equivalent known for the same purpose.
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.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuda.
Regarding claim 10, which depends from claim 1: Tsuda is silent as whether a distance between the first portion and the second portion is greater than 5 mm in the plan view of the electronic device. However, the package is small and thus, a distance between the first portion and the second portion is greater than 5 mm in the plan view of the electronic device, would be an obvious design choice. For these reasons, claim 10 is obvious in view of Tsuda.
Regarding claim 11, which depends from claim 1: Tsuda is silent as whether the wiring member (17) contains copper or a copper alloy. However, another electrically conductive member, wire (10), can be copper. Tsuda specification ¶ 17. One having ordinary skill in the art at a time before the effective filing date would be motivated to modify the wiring member (17) to use copper because the modification would have involved the substitution of an equivalent known for the same purpose.
Allowable Subject Matter
Claims 2-9 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:
With regard to claim 2: The claim has been found allowable because the prior art of record does not disclose “the fixing element is a second semiconductor chip having a second upper electrode in the fixing region on a front surface thereof, the front surface being the outside surface; […] the second portion of the wiring member is bonded to the second upper electrode”, in combination with the remaining limitations of the claim.
With regard to claims 3-9: The claims have been found allowable due to their dependency from claim 2 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA KATHLEEN HALL whose telephone number is (571)270-7567. The examiner can normally be reached Monday-Friday, 8 a.m.-5 p.m.
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, Fernando Toledo can be reached at 571-272-1867. 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.
/Victoria K. Hall/Primary Examiner, Art Unit 2897
Prosecution Insights