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 without traverse of invention group I in the reply filed on 06/02/2026 is acknowledged.
Applicant's election with traverse of species 1, Fig. 1 in the reply filed on 06/02/2026 is acknowledged. The traversal is on the ground(s) that “Claims 1-11 & 13-15 are generic to Species 1, 2 & 3. Claim 12 is specific to Species 1. No pending claim in pending Claims 1-15 is specific to Species 2 (Fig. 1B) or to Species 3 (Fig. IC).” This is not found persuasive because “the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search would be necessary to search the entire scope of the claim…If applicant presents species claims to more than one patentably distinct species of the invention after an Office action on only generic claims, with no restriction requirement, the Office may require the applicant to elect a single species for examination.” MPEP 808.01 (a). Thus, whether or not claim specific to Species 2 and 3 is presented, the restriction between species 1-3 is required because the generic claims encompass such a multiplicity of species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/02/2026.
Claim Rejections - 35 USC § 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 5-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 5, 6, 7, claim 5, claim 6 and claim 7 each recites the limitation “a thermal conductivity that is greater than 3 W/mK” which cover a range up to infinity. However, the specification does not provide any description of a molded package structure having an infinity thermal conductivity.
Accordingly, claims 5, 6, 7 were not in possession of Applicant at the time of filing.
Appropriate correction is 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.
(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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kim et al. (US Pub. 20170271315).
Regarding claim 1, Kim et al. discloses in Fig. 1, Fig. 3 an electronic device, comprising:
a multilevel package substrate [110 and 120] having opposite first and second sides;
a semiconductor die [130] attached to the first side;
a first molded package structure [140] on the first side [paragraph [0042]]; and
a second molded package structure [113] on the second side and spaced apart from the first molded package structure [140][paragraph [0039]].
Notes, “molded package structure” is a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). (MPEP 2113).
Further, the elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). MPEP 2131.
Therefore, layer 140 and layer 113 are equivalent to the claimed “first molded package structure” and “a second molded package structure.”
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Regarding claim 2, Kim et al. discloses in Fig. 1, Fig. 3
wherein the first molded package structure [140] encloses the semiconductor die [130].
Regarding claims 3-4, Kim et al. discloses in Fig. 1 and Fig. 3
a solder ball [150] that contacts a conductive metal feature [111][Fig. 1] or [114][Fig. 3] on the second side of the multilevel package substrate [110 and 120];
wherein the second molded package structure [113] encloses a portion of the conductive metal feature [111][Fig. 1] or [114][Fig. 3] and contacts a portion of the solder ball [150].
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 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US Pub. 20170271315) as applied to claim 1 above in view of Karhade et al. (US Pub. 20190006319), Chen et al. (US Pub. 20230123286) and Kang et al. (US Pub. 20240321673).
Regarding claims 5-10, Kim et al. fails to disclose
wherein the second molded package structure has a thermal conductivity that is greater than 3 W/mK;
wherein the first molded package structure has a thermal conductivity that is greater than 3 W/mK;
wherein the thermal conductivity of the second molded package structure is approximately 4.3 W/mK;
wherein the first molded package structure has a thermal conductivity that is approximately 4.3 W/mK.
Kang et al. discloses in paragraph [0066] a molding compound can have a thermal conductivity that is greater than 3 W/mK [3.0 W/mK to 6 W/mK].
Chen et al. discloses in Fig. 7, paragraph [0023]
wherein the first molded package structure [50] has a thermal conductivity that is greater than 3 W/mK;
wherein the first molded package structure has a thermal conductivity that is approximately 4.3 W/mK [In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)]
Karhade et al. discloses in Fig. 1, paragraph [0028]
the second molded package structure [102] has a thermal conductivity that is greater than the first molded package structure [180].
Thus, the combination of Karhade et al., Chen et al. and Kang suggests wherein the second molded package structure has a thermal conductivity that is greater than 3 W/mK; wherein the thermal conductivity of the second molded package structure is approximately 4.3 W/mK.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Karhade et al., Chen et al. and Kang into the method of Kim et al. to include wherein the second molded package structure has a thermal conductivity that is greater than 3 W/mK; wherein the first molded package structure has a thermal conductivity that is greater than 3 W/mK; wherein the thermal conductivity of the second molded package structure is approximately 4.3 W/mK; wherein the first molded package structure has a thermal conductivity that is approximately 4.3 W/mK. The ordinary artisan would have been motivated to modify Kim et al. in the above manner for the purpose of providing suitable thermal conductivity of molded package structures to improve thermal effect [paragraph [0023] of Chen et al., paragraph [0028] of Karhade et al. and paragraph [0066] of Kang et al.].
In addition, Applicant has not provided any criticality of the claimed range. The ordinary artisan would have been motivated to modify Kim et al. to include the claimed range for at least the purpose of optimization and routine experimentation to provide desired thermal effect. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[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). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hisada et al. (US Pub. 20120187562) in view of Karhade et al. (US Pub. 20190006319).
Regarding claim 11, Hisada et al. discloses in Fig. 1 a system, comprising a circuit board [120] and an electronic device attached to the circuit board [120], the electronic device comprising:
a multilevel package substrate [108] having opposite first and second sides and a terminal [112] soldered to a conductive feature [122] of the circuit board [120];
a semiconductor die [102] attached to the first side;
a first molded package structure [114] on the first side.
Hisada et al. fails to disclose
a second molded package structure on the second side and spaced apart from the first molded package structure.
Karhade et al. discloses in Fig. 1, paragraph [0028]
a second molded package structure [102] on the second side and spaced apart from the first molded package structure [180].
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of Karhade et al. into the method of Hisada et al. to include a second molded package structure on the second side and spaced apart from the first molded package structure. The ordinary artisan would have been motivated to modify Hisada et al. in the above manner for the purpose of improving heat transfer in upward direction [paragraph [0028] of Karhade et al.].
Regarding claims 12-13, Hisada et al. discloses in Fig. 1
wherein the first molded package structure [114] encloses the semiconductor die [102];
wherein the terminal [112] is a solder ball that contacts a conductive metal feature on the second side of the multilevel package substrate [108].
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Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hisada et al. (US Pub. 20120187562) in view of Karhade et al. (US Pub. 20190006319) as applied to claim 11 above in view of Chen et al. (US Pub. 20230123286) and Kang et al. (US Pub. 20240321673).
Regarding claims 5-10, Hisada et al. and Karhade et al. fails to disclose
wherein the second molded package structure has a thermal conductivity that is greater than 3 W/mK;
wherein the thermal conductivity of the second molded package structure is approximately 4.3 W/mK.
Karhade et al. discloses in Fig. 1, paragraph [0028]
the second molded package structure [102] has a thermal conductivity that is greater than the first molded package structure [180].
Kang et al. discloses in paragraph [0066] a molding compound can have a thermal conductivity that is greater than 3 W/mK [3.0 W/mK to 6 W/mK].
Chen et al. discloses in Fig. 7, paragraph [0023]
wherein the first molded package structure [50] has a thermal conductivity that is greater than 3 W/mK;
wherein the first molded package structure has a thermal conductivity that is approximately 4.3 W/mK [In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)]
Thus, the combination of Karhade et al., Chen et al. and Kang suggests wherein the second molded package structure has a thermal conductivity that is greater than 3 W/mK; wherein the thermal conductivity of the second molded package structure is approximately 4.3 W/mK.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to incorporate the teachings of, Chen et al. and Kang into the method of Hisada et al. and Karhade et al. to include wherein the second molded package structure has a thermal conductivity that is greater than 3 W/mK; wherein the thermal conductivity of the second molded package structure is approximately 4.3 W/mK. The ordinary artisan would have been motivated to modify Hisada et al. and Karhade et al. in the above manner for the purpose of providing suitable thermal conductivity of molded package structures to improve thermal effect [paragraph [0023] of Chen et al., paragraph [0028] of Karhade et al. and paragraph [0066] of Kang et al.].
In addition, Applicant has not provided any criticality of the claimed range. The ordinary artisan would have been motivated to modify Hisada et al. and Karhade et al. to include the claimed range for at least the purpose of optimization and routine experimentation to provide desired thermal effect. The claimed ranges are merely optimizations, and as such are not patentable over the prior art. "[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). "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art discloses similar materials, devices and methods.
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/SOPHIA T NGUYEN/Primary Examiner, Art Unit 2893
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