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
Currently, preliminarily-amended claims 1-13 are pending and examined below.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement (IDS)
Three information disclosure statements submitted on 06/04/2024 ("06-04-24 IDS"), 06/11/2024 (“06-11-24 IDS”) and 08/17/2025 (“08-17-25 IDS”) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the 06-04-24 IDS, 06-11-24 IDS and 08-17-25 IDS are being considered by the examiner.
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 following title is suggested: SEMICONDUCTOR DEVICE[[,]] AND ELECTRONIC APPARATUS EACH HAVING SEALING RESIN PART AROUND SEMICONDUCTOR ELEMENT AND TRANSPARENT MEMBER, AND MANUFACTURING METHOD OF SEMICONDUCTOR DEVICE THE SAME
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.
Claim 13 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 pre-AIA the applicant regards as the invention.
Claim 13 is indefinite, because the term “normal” in “normal temperature” creates a zone of uncertainty as the term “norm” is relative and subjective. What one of ordinary skill in the art would consider a “normal temperature” may not be as such to another.
A. Prior-art rejections based on ‘215 Tu
Claim Rejections - 35 USC § 1021
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.
Claims 1, 4, 6, 7 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pub. No. US 2011/0291215 A1 to Tu et al. (" ‘215 Tu").
Fig. 13B of ‘215 Tu has been provided to support the rejection below:
[AltContent: textbox (PP)][AltContent: textbox (TMCP)][AltContent: arrow][AltContent: textbox (S1)]
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Regarding independent claim 1, ‘215 Tu teaches a semiconductor device (see Fig. 13B. para [0065] - “Furthermore, as shown in FIG. 13A and FIG. 13B, the encapsulation compound 60 may further extend to cover the edges of the third surface 26 of the transparent lid 20, without covering the photosensitive area 12, so as to further shade the lateral of the transparent lid 20 from incoming light. The encapsulation compound 60 may be a mold compound or a liquid compound.”), comprising:
a substrate SUB;
a semiconductor element 11 (para [0059] - “image sensor chip 11”) that is provided on the substrate SUB;
a transparent member 20 (para [0064] - “transparent lid 20”) that is provided on the semiconductor element 11 through a support part 24 (para [0064] - “support frame 24”); and
a sealing resin part 60 (para [0065] - “encapsulation compound 60”; para [0050]) that is formed around the semiconductor element 11 and the transparent member 20 on the substrate SUB,
wherein the sealing resin part 60 has a protrusion part PP having an upper surface S1 thereof perpendicular to a plate thickness direction D1 of the substrate SUB, the upper surface S1 being positioned above a front surface 26 (para [0065] - “third surface 26”) of the transparent member 20 in the plate thickness direction D1.
Regarding claim 4, ‘215 Tu teaches the protrusion part PP that has a transparent member covering part TMCP extending on the front surface of the transparent member 20 so as to cover an edge part of the front surface of the transparent member 20.
Regarding independent claim 6, ‘215 Tu teaches an electronic apparatus (para [0188] - “The imaging device (solid-state imaging device) according to the present technique can be applied to an electronic apparatus in general that uses a solid-state imaging element for an image capturing part (photoelectric conversion part), such as a camera device, such as a digital still camera or a video camera, a portable terminal device having an imaging function, or a copying machine that uses a solid-state imaging element for an image reading part. The imaging device may be of a configuration formed as a single chip or may be of a module-like configuration having an imaging function in which an imaging part and a signal processing part or an optical system are packaged together.”), comprising:
a semiconductor device (see Fig. 13B. para [0065] - “Furthermore, as shown in FIG. 13A and FIG. 13B, the encapsulation compound 60 may further extend to cover the edges of the third surface 26 of the transparent lid 20, without covering the photosensitive area 12, so as to further shade the lateral of the transparent lid 20 from incoming light. The encapsulation compound 60 may be a mold compound or a liquid compound.”) including:
a substrate SUB;
a semiconductor element 11 (para [0059] - “image sensor chip 11”) that is provided on the substrate SUB;
a transparent member 20 (para [0064] - “transparent lid 20”) that is provided on the semiconductor element 11 through a support part 24 (para [0064] - “support frame 24”); and
a sealing resin part 60 (para [0065] - “encapsulation compound 60”; para [0050]) that is formed around the semiconductor element 11 and the transparent member 20 on the substrate SUB,
wherein the sealing resin part 60 has a protrusion part PP having an upper surface S1 thereof perpendicular to a plate thickness direction D1 of the substrate SUB, the upper surface S1 being positioned above a front surface 26 (para [0065] - “third surface 26”) of the transparent member 20 in the plate thickness direction D1.
Regarding independent claim 7, ‘215 Tu teaches a manufacturing method of a semiconductor device, the method comprising:
a step of mounting a semiconductor element 11 on a substrate SUB;
a step of providing, on the semiconductor element 11 through a support part 24, a transparent member 20 with at least a peripheral edge part of a front surface 26 covered with a protective material TMCP; and
a step of forming a sealing resin part 60 around the semiconductor element 11 and the transparent member 20 on the substrate by use of a mold 60.
Regarding claim 13, ‘215 Tu teaches wherein, in the step of forming the sealing resin part 60, a resin material in a liquid sate at normal temperature is used as a resin material for forming the sealing resin part 60 (para [0055] - “The encapsulation compound 60 adopted is a liquid compound.”; see also para [0054]).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
(1). Determining the scope and contents of the prior art.
(2). Ascertaining the differences between the prior art and the claims at issue.
(3). Resolving the level of ordinary skill in the pertinent art.
(4). Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over ‘215 Tu.
Regarding claim 2, ‘215 Tu teaches a general condition of a non-zero dimension between the front surface of the transparent member and the upper surface of the protrusion part in the plate thickness direction.
‘215 Tu does not disclose a specific condition the dimension being 10 to 200 [Symbol font/0x6D]m.
According to Section 2144.05 of the MPEP, "[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).
Here, ‘215 Tu teaches said general condition. Unless the Applicant can show that said specific condition produces unexpected results that are different in kind and not different in degree over said general condition taught by ‘215 Tu, claim 2 would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because it would not be inventive to discover the optimum or workable ranges by routine experimentation. The burden shifts to the Applicant to show that the claimed range provides unexpected result that is difference in kind and not difference in degree. See In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Moreover, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Court held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04).
Since the only difference between the claimed semiconductor device and the semiconductor device taught by ‘215 Tu is a relative dimension of the dimension being 10 to 200 [Symbol font/0x6D]m, the Court would be more likely than not hold that the claimed semiconductor device is not patentably distinct from the semiconductor device taught by ‘215 Tu. Also, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art modify semiconductor device such that the dimension is 10 to 200 [Symbol font/0x6D]m with a reasonable expectation of providing a semiconductor device that is small as possible as the one of ordinary skill in the semiconductor art is incentivized to make adjustments to size to fit an intended purpose of making device smaller as market forces demand that the device scale down with Moore's Law.
B. Prior-art rejections based on ‘862 Tu
Claim Rejections - 35 USC § 102
Claims 1, 4-7 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pub. No. US 2011/0024862 A1 to Tu et al. (" ‘862 Tu") (cited in the 06-11-24 IDS).
Fig. 3B of ‘862 Tu has been provided to support the rejection below:
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Regarding independent claim 1, ‘862 Tu teaches a semiconductor device (see Fig. 3B), comprising:
a substrate 10 (para [0028] - “a substrate 10”);
a semiconductor element 20 (para [0028] - “a chip 20”) that is provided on the substrate 10;
a transparent member 32 (para [0033] - “transparent lid 32”) that is provided on the semiconductor element 20 through a support part 70 (para [0040] - “a third adhesive 70”); and
a sealing resin part 31’ (para [0037] - “a plastic sheet 31’ may be made of heat-resistant plastic material or liquid crystal polyester (LCP).”) that is formed around the semiconductor element 20 and the transparent member 32 on the substrate 10;
wherein the sealing resin part 31’ has a protrusion part PP having an upper surface thereof perpendicular to a plate thickness direction D1 of the substrate 10, the upper surface being positioned above a front surface of the transparent member 32 in the plate thickness direction D1.
Regarding claim 4, ‘862 Tu teaches the protrusion part PP that has a transparent member covering part TMCP extending on the front surface of the transparent member 32 so as to cover an edge part of the front surface of the transparent member 32.
Regarding claim 5, ‘862 Tu teaches a sealing resin receiving part 90 (para [0042] - “dam 90”) that is provided at an edge part on the front surface of the transparent member 32 and is in contact with the protrusion part PP on an outer side surface is provided.
Regarding independent claim 6, ‘862 Tu teaches an electronic apparatus (para [0005] - “Such an image sensor package structure may be later integrated with an external device, such as a PCB, to be used in various electronic products such as a DSC (Digital Still Camera), a DV (Digital Video), a security monitoring system, a mobile phone, and a vehicle image sensing module.”), comprising:
a semiconductor device (see Fig. 3B) including:
a substrate 10 (para [0028] - “a substrate 10”);
a semiconductor element 20 (para [0028] - “a chip 20”) that is provided on the substrate 10;
a transparent member 32 (para [0033] - “transparent lid 32”) that is provided on the semiconductor element 20 through a support part 70; and
a sealing resin part 31’ (para [0037] - “a plastic sheet 31’ may be made of heat-resistant plastic material or liquid crystal polyester (LCP).”) that is formed around the semiconductor element 20 and the transparent member 32 on the substrate 10;
wherein the sealing resin part 31’ has a protrusion part PP having an upper surface thereof perpendicular to a plate thickness direction D1 of the substrate 10, the upper surface being positioned above a front surface of the transparent member 32 in the plate thickness direction D1.
Regarding independent claim 7, ‘862 Tu teaches a manufacturing method of semiconductor device, the method comprising:
a step of mounting a semiconductor element 20 (para [0041] - “chip 20”) on a substrate 10 (para [0042] - “substrate 10”);
a step of providing, on the semiconductor element 20 through a support part 70 (para [0040] - “a third adhesive 70”), a transparent member 32 (para [0033] - “transparent lid 32”) with at least a peripheral edge part of a front surface covered with a protective material; and
a step of forming a sealing resin part 31’ (para [0037]) around the semiconductor element 20 and the transparent member 32 on the substrate 10 by use of a mold.
Regarding claim 13, ‘862 Tu teaches wherein, in the step of forming the sealing resin part 31’ (para [0037] - “a plastic sheet 31’ may be made of heat-resistant plastic material or liquid crystal polyester (LCP).”), a resin material in a liquid state at normal temperature is used as a resin material for forming the sealing resin part 31’.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over ‘862 Tu.
Regarding claim 2, ‘862 Tu teaches a general condition of a non-zero dimension between the front surface of the transparent member and the upper surface of the protrusion part in the plate thickness direction.
‘862 Tu does not disclose a specific condition the dimension being 10 to 200 [Symbol font/0x6D]m.
According to Section 2144.05 of the MPEP, "[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).
Here, ‘862 Tu teaches said general condition. Unless the Applicant can show that said specific condition produces unexpected results that are different in kind and not different in degree over said general condition taught by ‘862 Tu, claim 2 would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because it would not be inventive to discover the optimum or workable ranges by routine experimentation. The burden shifts to the Applicant to show that the claimed range provides unexpected result that is difference in kind and not difference in degree. See In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Moreover, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Court held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04).
Since the only difference between the claimed semiconductor device and the semiconductor device taught by ‘862 Tu is a relative dimension of the dimension being 10 to 200 [Symbol font/0x6D]m, the Court would be more likely than not hold that the claimed semiconductor device is not patentably distinct from the semiconductor device taught by ‘862 Tu. Also, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art modify semiconductor device such that the dimension is 10 to 200 [Symbol font/0x6D]m with a reasonable expectation of providing a semiconductor device that is small as possible as the one of ordinary skill in the semiconductor art is incentivized to make adjustments to size to fit an intended purpose of making device smaller as market forces demand that the device scale down with Moore's Law.
Regarding claim 3, ‘862 Tu teaches the transparent member 32 that has a rectangular plate-like outer shape with one plate surface as the front surface,
the protrusion part PP is formed in a frame shape by four side parts along a rectangular outer shape of the transparent member 32 in plan view.
‘962 Tu does not disclose a width of each side part of the protrusion part PP that is 100 [Symbol font/0x6D]m or more.
In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Court held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04).
Since the only difference between the claimed semiconductor device and the semiconductor device taught by ‘862 Tu is a relative dimension of the width being 100 [Symbol font/0x6D]m or more, the Court would be more likely than not hold that the claimed semiconductor device is not patentably distinct from the semiconductor device taught by ‘862 Tu. Also, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art modify semiconductor device such that the width is 100 [Symbol font/0x6D]m or more with a reasonable expectation of providing a semiconductor device that is small as possible as the one of ordinary skill in the semiconductor art is incentivized to make adjustments to size to fit an intended purpose of making device smaller as market forces demand that the device scale down with Moore's Law.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 8 is objected to for depending on a rejected base claim 7, but would be allowable if it is rewritten in independent form to include all of the limitations of the base claim 7 or the base claim 7 is amended to include all of the limitations of claim 8.
Claims 9-12 are allowable for depending on the allowable claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pub. No. US 2020/0144318 A1 to Hsieh
Pub. No. US 2019/0074310 A1 to Chuang et al.
Pub. No. US 2018/0114804 A1 to Hsieh
Pub. No. US 2011/0156187 A1 to Tu et al.
Pub. No. US 2005/0237418 A1 to Sakamoto
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JUNG whose telephone number is (408) 918-7554. The examiner can normally be reached on 8:30 A.M. to 7 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, Eliseo Ramos-Feliciano can be reached on (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL JUNG/Primary Examiner, Art Unit 2817 13 June 2026
1 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 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
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