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
Election/Restrictions
1. Applicant's election, without traverse, of claims 1-7 in the “Response to Restriction Requirement” filed on 06/18/2026 is acknowledged and entered by the Examiner. Applicant’s addition of claims 21-33 in “Claims” filed on 06/18/2026 is acknowledged and entered the Examiner
This office action consider claims 1-7 and 21-33 pending for prosecution.
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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
2. Claims 1-7, 27-28, and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tan et al. (US 20190043797 A1; hereinafter Tan).
Regarding claim 1, Tan teaches a package structure (see the entire document, specifically Fig. 1a+; [0002+], and as cited below), comprising (see alternative rejection for claim 1, below):
a substrate structure (320; Fig. 3; [0046]) defining a cavity;
a chip (130; Fig. 3; [0047]) disposed in the cavity;
an encapsulant (185; Fig. 3; [0044, 0052]) encapsulating the chip (130; Fig. 3; [0047]); and
an adhesive element (165; Fig. 3; [0038]) disposed over a top surface of the substrate structure (320; Fig. 3; [0046]),
wherein the substrate structure (320; Fig. 3; [0046]) comprises a barring structure (328; Fig. 3; [0046]) between the encapsulant (185; Fig. 3; [0044, 0052]) and the adhesive element (165; Fig. 3; [0038]) and configured to reduce a contact between the encapsulant (185; Fig. 3; [0038]) and the adhesive element (165; Fig. 3; [0038]).
It is the Examiner’s position that the limitation of " wherein the substrate structure comprises a barring structure between the encapsulant and the adhesive element and configured to reduce a contact between the encapsulant and the adhesive element” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Lee has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Tan teaches the structure of claim 1 as detailed above. Thus, Tan teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 2, Tan teaches all of the features of claim 1.
Tan further teaches wherein the barring structure (328; Fig. 3; [0046]) comprises a roof element, the roof element (328; Fig. 3; [0046]) defines a through hole (380; Fig. 3; [0047]) connecting the cavity to outside the cavity and overlapping the chip (130; Fig. 3; [0047]) in a direction substantially perpendicular to the top surface of the substrate structure (320; Fig. 3; [0046]).
Regarding claim 3, Tan teaches all of the features of claim 2.
Tan further teaches wherein a bottom surface of the roof element (328; Fig. 3; [0046]) defines an inner top surface of the cavity
Regarding claim 4, Tan teaches all of the features of claim 2.
Tan further teaches wherein the encapsulant (185; Fig. 3; [0044, 0052]) is physically spaced apart from the adhesive element (165; Fig. 3; [0038]) by the roof element (328; Fig. 3; [0046]).
Regarding claim 5, Tan teaches all of the features of claim 2.
Tan further teaches wherein the encapsulant (185; Fig. 3; [0044, 0052]) is free from contacting an inner sidewall of the through hole (380; Fig. 3; [0047]).
Regarding claim 6, Tan teaches all of the features of claim 1.
Tan further comprising a lid (370; Fig. 3; [0047]) attached to the top surface of the substrate structure through the adhesive element (165; Fig. 3; [0038]), wherein an elevation of the adhesive element (165; Fig. 3; [0038]) is higher than an elevation of a top surface of the chip (130; Fig. 3; [0047]) with respect to a bottom surface opposite to the top surface of the chip (130; Fig. 3; [0047]).
Regarding claim 7, Tan teaches all of the features of claim 6.
Tan further teaches wherein the encapsulant (185; Fig. 3; [0044, 0052]) does not contact the lid (370; Fig. 3; [0047]).
Regarding claim 27, Tan teaches all of the features of claim 1.
Tan further teaches wherein the substrate structure (320; Fig. 3; [0046]) comprises an alignment mark (370; Fig. 3; [0047]) on the top surface of the substrate structure, the alignment mark (370; Fig. 3; [0047]) comprising a conductive pad or a conductive pattern, and the substrate structure (320; Fig. 3; [0046]) further comprises a core layer (122; Fig. 3; [0023]), conductive layers (154, 160; [0024]) on opposite surfaces of the core layer (122; Fig. 3; [0023]), a plurality of conductive structures (156; [0024]) extending through the core layer (122; Fig. 3; [0023]) and electrically connecting the conductive layers (154, 160; [0024]), and a plurality of external terminals (160; [0024]) at a bottom surface of the substrate structure respectively defined by a plurality of openings exposing the conductive layer.
Regarding claim 28, Tan teaches all of the features of claim 6.
Tan further teaches wherein the lid (370; Fig. 3; [0047]) comprises a chimney structure defining a through hole (175; Fig. 3; [0047]) connected to the cavity, and a width of the through hole (175; Fig. 3; [0047]) is less than a thickness (width in the horizontal direction; see Fig. 3) of a wall of the chimney structure (370; Fig. 3; [0047]).
Regarding claim 33, Tan teaches all of the features of claim 6.
Tan further teaches wherein an outer lateral surface of the adhesive element (165; Fig. 3; [0038]) is substantially aligned with an outer lateral surface of the lid (370; Fig. 3; [0047])
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
3. Claims 25 and 29-32 are rejected under 35 U.S.C.103 as being unpatentable over Tan et al. (US 20190043797 A1; hereinafter Tan), in view of the following statement.
Regarding claim 25, Tan teaches all of the features of claim 1.
Tan further teaches wherein the adhesive element (165; Fig. 3; [0038]) (see below for “vertically overlaps”) the encapsulant (185; Fig. 3; [0044, 0052]), and a gap is between the adhesive element (165; Fig. 3; [0038]) and the encapsulant (185; Fig. 3; [0044, 0052]) in a direction substantially perpendicular to the top surface of the substrate structure (320; Fig. 3; [0046]).
As noted above, Tan does not expressly disclose “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure). Also, the Applicant has not shown that “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, Figures 1G and 1H of the instant disclosure discloses other possible options such as where the adhesive element does not vertically overlap the encapsulant. Therefore, no rationale is given that the invention will not function without “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure”. Thus, the claimed “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure” is significant. Thus, the claimed limitation of “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the adhesive element vertically overlaps the encapsulant, and a gap is between the adhesive element and the encapsulant in a direction substantially perpendicular to the top surface of the substrate structure” is not patentable over Tan.
Regarding claim 29, Tan teaches all of the features of claim 6.
Tan further teaches wherein the lid (370; Fig. 3; [0047]) comprises a metal lid, and an outer lateral surface of the lid (370; Fig. 3; [0047]) (see below for “is laterally set back from an outer lateral surface”) of the substrate structure (320; Fig. 3; [0046]).
As noted above, Tan does not expressly disclose “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure). Also, the Applicant has not shown that “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, Figure 1F and paragraphs [0054-0055] of the instant disclosure discloses other possible options such as “In some arrangements, an outer lateral surface 70a of the adhesive element 70 is substantially aligned with the lateral surface 60b of the lid 60 and the surface 300b of the substrate 300”. Therefore, no rationale is given that the invention will not function without “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure”. Thus, the claimed “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure” is significant. Thus, the claimed limitation of “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the lid comprises a metal lid, and an outer lateral surface of the lid is laterally set back from an outer lateral surface of the substrate structure” is not patentable over Tan.
Regarding claim 30, Tan teaches all of the features of claim 6.
Tan further teaches wherein a width of the adhesive element (165; Fig. 3; [0038]) (see below for “is less than”) a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid (370; Fig. 3; [0047]).
As noted above, Tan does not expressly disclose “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid). Also, the Applicant has not shown that “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid”. Thus, the claimed “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid” is significant. Thus, the claimed limitation of “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein a width of the adhesive element is less than a width of the top surface of the substrate structure and less than a width of a bottom surface of the lid” is not patentable over Tan.
Regarding claim 31, Tan teaches all of the features of claim 6.
Tan further teaches wherein the lid (370; Fig. 3; [0047]) has a through hole (175; Fig. 3; [0047]), and a width of the chip (130; Fig. 3; [0047]) is (see below for “greater than”) a width of the through hole (175; Fig. 3; [0047]).
As noted above, Tan does not expressly disclose “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole). Also, the Applicant has not shown that “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole”. Thus, the claimed “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole is significant. Thus, the claimed limitation of “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the lid has a through hole, and a width of the chip is greater than a width of the through hole” is not patentable over Tan.
Regarding claim 32, Tan teaches all of the features of claim 6.
Tan further teaches wherein the adhesive element (165; Fig. 3; [0038]) comprises a portion (see below for “extending over”) an outer lateral surface of the lid (370; Fig. 3; [0047])
As noted above, Tan does not expressly disclose “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid). Also, the Applicant has not shown that “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, Claim 33 of the instant disclosure discloses other possible options such as “wherein an outer lateral surface of the adhesive element is substantially aligned with an outer lateral surface of the lid”. Therefore, no rationale is given that the invention will not function without “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid”. Thus, the claimed “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid” is significant. Thus, the claimed limitation of “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the adhesive element comprises a portion extending over an outer lateral surface of the lid” is not patentable over Tan.
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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
4. Claims 1 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tomita (US 20170345949 A1; hereinafter Tomita).
Regarding claim 1, Tomita teaches a package structure (see the entire document, specifically Fig. 1a+; [0002+], and as cited below), comprising (see alternative rejection for claim 1, above):
a substrate structure (10; Fig. 3; [0056, 0106]) defining a cavity;
a chip (20; Fig. 3; [0082]) disposed in the cavity;
an encapsulant (60; Fig. 3; [0087-0088]) encapsulating the chip (20; Fig. 3; [0082]); and
an adhesive element (85; Fig. 3; [0109]) disposed over a top surface of the substrate structure (10; Fig. 3; [0056, 0106]),
wherein the substrate structure (10; Fig. 3; [0056, 0106]) comprises a barring structure ({10c}; Fig. 3; [0117]) between the encapsulant (60; Fig. 3) and the adhesive element (85; Fig. 3) and configured to reduce a contact between the encapsulant (60; Fig. 3) and the adhesive element (85).
It is the Examiner’s position that the limitation of " wherein the substrate structure comprises a barring structure between the encapsulant and the adhesive element and configured to reduce a contact between the encapsulant and the adhesive element” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Lee has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Tomita teaches the structure of claim 1 as detailed above. Thus, Tomita teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 26, Tomita teaches all of the features of claim 1.
Tomita further teaches wherein a top surface of the encapsulant (60; Fig. 3; [0087-0088]) comprises a concave curved surface and is lower than the top surface of the substrate structure (10).
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 of this title, 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.
Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document.
5. Claims 21-24 are rejected under 35 U.S.C.103 as being unpatentable over Tomita (US 20170345949 A1; hereinafter Tomita), in view of the following statement.
Regarding claim 21, Tomita teaches all of the features of claim 1.
Tomita further teaches wherein the chip (20; Fig. 3; [0082]) comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip (30; Fig. 3; [0066]) disposed between the chip (20; Fig. 3; [0082]) and the substrate structure (10; Fig. 3; [0056, 0106], where device 30 is between device 20 and the bottom of substrate 10), and a width of the second chip (30; Fig. 3; [0066]) (see below for “being greater than”) a width of the chip (20; Fig. 3; [0082]).
As noted above, Tomita does not expressly disclose “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip). Also, the Applicant has not shown that “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Therefore, no rationale is given that the invention will not function without “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip”. Thus, the claimed “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip” is significant. Thus, the claimed limitation of “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the chip comprises a microelectromechanical system (MEMS) sensor, the package structure further comprising a second chip disposed between the chip and the substrate structure, and a width of the second chip being greater than a width of the chip” is not patentable over Tomita.
Regarding claim 22, Tomita teaches all of the features of claim 1.
Tomita further teaches wherein the encapsulant (60; Fig. 3; [0087-0088]) comprises a silicone-based gel, the adhesive element (85; Fig. 3; see [0109-112]) comprises an epoxy-based resin, and a hardness of the adhesive element (85; Fig. 3; [0109]) (see below for “is greater than”) a hardness of the encapsulant (60; Fig. 3; [0087-0088]).
As noted above, Tomita does not expressly disclose “wherein the encapsulant comprises a silicone-based gel, the adhesive element comprises an epoxy-based resin, and a hardness of the adhesive element is greater than a hardness of the encapsulant”.
However, the instant specification contains no disclosure of either the critical nature of the claimed “wherein the encapsulant comprises a silicone-based gel, the adhesive element comprises an epoxy-based resin, and a hardness of the adhesive element is greater than a hardness of the encapsulant” or of any unexpected results arising therefrom. Where patentability is aid to be based upon particular chosen compositions or upon another variable recited in a claim, the applicant must show that the chosen compositions are critical. (.In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).).
Regarding claim 23, Tomita teaches all of the features of claim 1.
Tomita further teaches wherein the encapsulant (60; Fig. 3; [0087-0088]) is free of fillers, and the adhesive element (85; Fig. 3; see [0109-112]) (see below for “comprises fillers”)
As noted above, Tomita does not expressly disclose “wherein the encapsulant is free of fillers, and the adhesive element comprises fillers”.
However, the instant specification contains no disclosure of either the critical nature of the claimed “wherein the encapsulant is free of fillers, and the adhesive element comprises fillers” or of any unexpected results arising therefrom. Where patentability is aid to be based upon particular chosen compositions or upon another variable recited in a claim, the applicant must show that the chosen compositions are critical. (.In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).).
Regarding claim 24, Tomita teaches all of the features of claim 1.
Tomita further teaches wherein a modulus of the adhesive element (85; Fig. 3; see [0109-112]) (see below for “is greater than”) a modulus of the encapsulant (60; Fig. 3; [0087-0088])
As noted above, Tomita does not expressly disclose “wherein a modulus of the adhesive element is greater than a modulus of the encapsulant”.
However, the instant specification contains no disclosure of either the critical nature of the claimed “wherein a modulus of the adhesive element is greater than a modulus of the encapsulant” or of any unexpected results arising therefrom. Where patentability is aid to be based upon particular chosen compositions or upon another variable recited in a claim, the applicant must show that the chosen compositions are critical. (.In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).).
Conclusion
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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