DETAILED ACTION
This Office Action is in response to the applicant's application filed May 31st, 2024. In virtue of this communication, claims 1-20 are currently presented in the instant application.
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 .
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,564,078 B2 (hereinafter 078). Although the claims at issue are not identical, they are not patentably distinct from each as outlined below.
With respect to claim 1, 078 discloses an electronic device, comprising:
an electronic component having an active surface and a backside surface (see column 15, line 25-27); and
a first power regulating component disposed under the electronic component and facing the backside surface (see column 15, line 28-33), wherein the first power regulating component is configured to transmit a first power to the electronic component through the backside surface (see column 15, line 41-43, 47-49).
With respect to claim 2, 078 discloses the electronic device of claim 1, wherein the electronic component overhangs the first power regulating component (see column 15, line 28-33; backside surface of electronic component is between active surface of electronic component and the first power regulating component).
With respect to claim 3, 078 discloses the electronic device of claim 2, further comprising: a second power regulating component configured to transmit a second power to the electronic component and disposed under the electronic component (see column 15, line 28-33, 47-49).
With respect to claim 4, 078 discloses the electronic device of claim 3, wherein the first power is different from the second power (see column 15, line 41-49; plurality of different powers).
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.
Claims 8-18 are 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.
Claim 8 requires a power regulating component configured to receive a first power flowing through a lateral surface of the power regulating component. However, figure 1 of the applicant’s disclosure (and paragraphs 24, 27, 47, 48, 51 of the application published as US 20250372584 A1) shows that power P1 is transmitted into the upper surface 31s2 of the power regulating component 31 and transmitted out of the upper surface 31s2 of the power regulating component 31 into the bottom surface 40s1 of the electronic component 40 (this applies equally for power regulating component 32). The disclosure and figures do not show the power P1 or any other power transmitted into or flowing through the lateral surface 31s3 of the power regulating component 31. Is the lateral surface meant to mean the side? Where and how does the first power flow through the lateral surface 31s3 of the power regulating component 31? For the purposes of examination, the limitation “a power regulating component configured to receive a first power flowing through a lateral surface of the power regulating component” has been understood to be --a power regulating component configured to receive a first power flowing through a side of the power regulating component--. Claims 9-18 are also rejected as they depend from claim 8.
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu et al. (US 2017/0263518 A1; hereinafter Yu).
With respect to claim 1, Yu teaches an electronic device in Figs. 1-20, comprising:
an electronic component 66B having an active surface (a surface including integrated circuit) and a backside surface (bottom of 66B in Fig. 16) (see Fig. 16 and paragraphs 32, 33); and
a first power regulating component 100B disposed under the electronic component 66B and facing the backside surface (bottom of 66B), wherein the first power regulating component 100B is configured to transmit a first power (voltage) to the electronic component 66B through the backside surface (bottom of 66B) (see Figs. 4, 16, 20, and paragraphs 16-18, 32, 33, 42).
With respect to claim 2, Yu teaches the electronic device of claim 1, wherein the electronic component 66B overhangs the first power regulating 100B component (see Figs. 16, 20, and paragraphs 32, 33; note overlap in figures).
With respect to claim 3, Yu teaches the electronic device of claim 2, further comprising: a second power regulating component 100C configured to transmit a second power (voltage) to the electronic component 66B and disposed under the electronic component 66B (see Figs. 4, 16, 20, and paragraphs 16-18, 32, 33).
With respect to claim 4, Yu teaches the electronic device of claim 3, wherein the first power (voltage from 100B) is different from the second power (voltage from 100C) (see Figs. 4, 16, 20, and paragraphs 16-18, 32, 33, 42; voltages are different because they come from different device dies, different routing; claim does not require for example two voltages to be different).
With respect to claim 5, Yu teaches the electronic device of claim 1, further comprising: a first encapsulant 44 partially encapsulating the first power regulating component 100B; and a first conductive via 30 penetrating the first encapsulant 44 and electrically connected to the electronic component 66B (see Fig. 5, 14-16, and paragraphs 14, 24, 31-33; 30 connects to 66B by way of 62, 64, 68).
With respect to claim 6, Yu teaches the electronic device of claim 5, further comprising: a second encapsulant 69 disposed over the first encapsulant 44; and a second conductive via 64 penetrating the second encapsulant 69 and electrically connected to the first power regulating component 100B through the first conductive via 30 (see Figs. 7, 8, 16, 17, paragraphs 27, 31-34; 64 connected to 30 by way of 62, 30 connected to 100B by way of 48).
With respect to claim 7, Yu teaches the electronic device of claim 6, wherein the second conductive via 64 and the second encapsulant 69 define a spaced accommodating a conductive element 68 electrically connected to the electronic component 66B (see Figs. 15-17 and paragraphs 31-34).
With respect to claim 8, (and in view of the 112 rejection) Yu teaches an electronic device in Fig. 1-20, comprising:
a power regulating component 100B configured to receive a first power (from 48) flowing through a side (bottom) of the power regulating component 100B (see Figs. 4-9 and paragraphs 16, 26, 27, 33); and
an electronic component 66B disposed over the power regulating component 100B and having an active surface (a surface including integrated circuit) and a backside surface (bottom of 66B in Fig. 16), wherein the electronic component 66B is configured to receive a second power (from 62) from the power regulating component 100B through the backside surface (bottom of 66B in Fig. 16) (see Figs. 14-16 and paragraphs 16-18, 32, 33, 42).
With respect to claim 9, Yu teaches the electronic device of claim 8, further comprising a first interconnection structure (30 on far left in Fig. 16) free from laterally overlapping the electronic component 66B (see Figs. (see Fig. 5, 14-16, and paragraphs 14, 31-33; 30 connects to 66B by way of 62, 64, 68).
With respect to claim 10, Yu teaches the electronic device of claim 9, further comprising: a first circuit structure (of 48 connected to 30 on far left) configured to support the first interconnection structure (30 on far left in Fig. 16), wherein the power regulating component 100B is spaced apart from the first circuit structure (see Figs. 6-9, 16 and paragraphs 22, 26, 27, 32, 33).
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 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US 2017/0263518 A1; hereinafter Yu).
With respect to claim 19, Yu discloses an electronic device in Figs. 1-20, comprising:
an interposer (comprising 30 and 44) (see Figs. 3-9 and paragraphs 14, 15, 24, 25);
a power regulating component 100B embedded within the interposer (comprising 30 and 44) and comprising a terminal (140A, 140B) exposed by the interposer (comprising 30 and 44) (see Figs. 4-9 and paragraphs 16, 19, 23, 33); and
an electronic component 66B connected to the terminal (140A, 140B) of the power regulating component 100B, wherein the electronic component 66B has a backside surface (bottom of 66B in Fig. 16) configured to receive a power (voltage) from the power regulating component 100B (see Figs. 4, 14-16 and paragraphs 16, 23, 31-33; 66B connected to 140A, 140B by way of 62, 64, 68).
Yu does not explicitly disclose wherein the combination of 30 and 44 is an interposer.
However, as defined by the applicant in paragraph 23 of the instant application published as US 20250372584 A1 and shown in at least Fig. 1, “the encapsulant 21, the encapsulant 22, and the interconnection structures 51 may function as a first interposer.” Elements 30 and 44 of Yu are respectively, an interconnection structure and an encapsulant. Per MPEP 2111.01 I, the best source for determining the meaning of a claim term is the specification.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the combination of layers 30 and 44 in Yu would function as an interposer because the applicant teaches that the combination of encapsulants and interconnection structures would function as an interposer. When a prior art apparatus is identical or substantially identical in structure, claimed properties or functional characteristics are presumed to be inherent, and a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
With respect to claim 20, Yu discloses the electronic device of claim 19, wherein the interposer (comprising 30 and 44) is configured to provide the power regulating component 100B with the power (voltage) and further configured to transmit a signal from the electronic component 66B (see Figs. 16-20 and paragraph 32 and note that the electronic component 66B is a system-on-chip. Also see paragraph 32 of the instant application published as US 20250372584 A1 which teaches that the electronic component can also be a system-on-chip). When a prior art apparatus is identical or substantially identical in structure, claimed properties or functional characteristics are presumed to be inherent, and a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01).
Allowable Subject Matter
Claims 11-18 (pending correction of the 112 rejection) 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: the prior art does not disclose or fairly suggest:
a first encapsulant connecting the first circuit structure to the power regulating component; a second encapsulant covering the power regulating component, wherein the first interconnection structure penetrates the first encapsulant and the second encapsulant, as called for in claim 11;
a second circuit structure over the active surface of the electronic component; and a second interconnection structure connected to the second circuit structure and disposed at a side of the electronic component, as called for in claim 12;
a first encapsulant and a second encapsulant in contact with the first encapsulant, and an interface between the first encapsulant and the second encapsulant intersects a sidewall of the power regulating component, as called for in claim 13 (because the closest prior art only has one encapsulant not two that intersects the sidewall of the power regulating component; claims 14-18 depend from claim 13).
Citation of Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure because each reference teaches an electronic device similar to that of the claimed invention: US 20160093588 A1, US 20200381392 A1, US 20220068867 A1, and US 20230261572 A1.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORDAN M KLEIN whose telephone number is (571)270-7544. The examiner can normally be reached 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Purvis can be reached at 571-272-1236. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.M.K/Examiner, Art Unit 2893
/SUE A PURVIS/ Supervisory Patent Examiner, Art Unit 2893
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