DETAILED ACTION
Response to Arguments
Applicant’s arguments, see Remarks, filed 1/26/26, with respect to the 103 rejections of claims 1-22 have been fully considered and are persuasive. The rejection has been withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 14-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 14-20 of U.S. Patent No. 12046588 in view of Yu (U.S. PGPub 2016/0056057).
Regarding claim 1, Claims 1 and 4 of the patent teach every limitation of claim 1 of the instant application except for: the second package bonded to the first package; the encapsulating material contacts sidewall surfaces of the one or more semiconductor devices and top surfaces of at least one semiconductor device of the one or more semiconductor devices; and an underfill disposed between the first package and second package.
Yu teaches a first package with a central region and a peripheral region surrounding the central region (Fig. 3B, 100, [0056], Fig. 1J) a second package stacked over and bonded to the first package (Fig. 3B, 200, [0056], Fig. 2A, [0042], Fig. 2B, [0053]), the second package comprising one or more semiconductor devices ([0042], 212) and an encapsulating material encapsulating the semiconductor devices, wherein the encapsulating material contacts sidewall surfaces of the one or more semiconductor devices, wherein the encapsulating material contacts top surfaces of at least one semiconductor device of the one or more semiconductor devices, (216, [0048]), and an underfill disposed between the first package and the second package (220, [0053], Fig. 2B).
It would have been obvious to a person having ordinary skill in the art to combine the teachings of Yu with Claim 1 of U.S. Pat. 12046588 such that the package comprises the second package bonded to the first package; the encapsulating material contacts sidewall surfaces of the one or more semiconductor devices and top surfaces of at least one semiconductor device of the one or more semiconductor devices; and an underfill disposed between the first package and second package for the purpose of encapsulating the devices (Yu, [0048]) and providing structural support between the first and second package (Yu, [0053]).
Regarding claim 14, Claim 14 of the patent teach every limitation of claim 14 of the instant application except for: an underfill disposed between the first package and second package.
Yu teaches a first package with a central region and a peripheral region surrounding the central region (Fig. 3B, 100, [0056], Fig. 1J) a second package stacked over and bonded to the first package (Fig. 3B, 200, [0056], Fig. 2A, [0042], Fig. 2B, [0053]), the second package comprising one or more semiconductor devices ([0042], 212) and an encapsulating material encapsulating the semiconductor devices (216, [0048]), and an underfill disposed between the first package and the second package (220, [0053], Fig. 2B).
It would have been obvious to a person having ordinary skill in the art to combine the teachings of Yu with Claim 1 of U.S. Pat. 12046588 such that the package comprises an underfill disposed between the first package and second package for the purpose of providing structural support between the first and second package (Yu, [0053]).
Allowable Subject Matter
Claims 1 and 14-22 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection.
Claims 9-13 are allowable.
Claims 2-8 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: Applicant’s arguments on p. 11 of the Remarks are persuasive, specifically those addressing the limitation regarding the distance between the packages, present in independent claims 1, 9, and 14.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALIA SABUR/ Primary Examiner, Art Unit 2812
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