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 .
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 11-14 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.
Regarding claim 11, the limitation of lines 1 and 2 are drawn to a product-by-process and thus given no patentable weight. For purposes of Examination, Examiner interprets the limitation of the non-metal anti-oxidation layer as not being required because [0029] of the instant application discloses the non-metal anti-oxidation layer is volatilized to arrive at the structure of Fig 2B.
Claim 12 would also be rejected because it is dependent on claim 11.
Regarding claim 13, the limitation of lines 1 and 2 are drawn to a product-by-process and thus given no patentable weight. For purposes of Examination, Examiner will interpret the claim as reading “The electronic package of claim 1, further comprising
Claim 14 would also be rejected because it is dependent on claim 13.
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, 6-7, 10-11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiao et. al. (CN 103441109 A), hereinafter Xiao.
Regarding claim 1, Xiao teaches an electronic package (Fig 1 semiconductor package structure 1, [0022] of translation), comprising: a carrier structure (Fig 1 substrate 12, [0022] of translation); an electronic component (Fig 1 semiconductor die 14, [0023] of translation) disposed on the carrier structure (Fig 1 substrate 12, [0022] of translation); a heat conductor (Fig 1 thermal interface material 18, [0023] of translation) disposed on the electronic component (Fig 1 semiconductor die 14, [0023] of translation); a heat dissipation structure (Fig 1 heat sink 20, [0022] of translation) disposed on the electronic component (Fig 1 semiconductor die 14, [0023] of translation), wherein the heat conductor (Fig 1 thermal interface material 18, [0023] of translation) is sandwiched between the electronic component (Fig 1 semiconductor die 14, [0023] of translation) and the heat dissipation structure (Fig 1 heat sink 20, [0022] of translation); a first intermetallic compound layer (Fig 1 intermetallic compound 182, [0031] of translation) formed between the heat dissipation structure (Fig 1 heat sink 20, [0022] of translation) and the heat conductor (Fig 1 thermal interface material 18, [0023] of translation); and a second intermetallic compound layer (Fig 1 intermetallic compound 181, [0031] of translation) formed between the heat conductor (Fig 1 thermal interface material 18, [0023] of translation) and the electronic component (Fig 1 semiconductor die 14, [0023] of translation).
Regarding claim 6, Xiao teaches the heat conductor (Fig 1 thermal interface material 18, [0023] of translation) is a thermal interface material layer (Fig 1 thermal interface material 18, [0023] of translation).
Regarding claim 7, Xiao teaches the thermal interface material layer (Fig 1 thermal interface material 18, [0023] of translation) is made of metal indium (In) (Indium Zinc alloy, [0030]).
Regarding claim 10, Xiao teaches the heat dissipation structure (Fig 1 heat sink 20, [0022] of translation) is made of metal copper (Cu) (copper, [0028] of translation).
Regarding claim 11, Xiao fails to teach before the first intermetallic compound layer is formed, a non-metal anti-oxidation layer is formed on an inner surface of the heat dissipation structure.
The language, term, or phrase “before the first intermetallic compound layer is formed, a non-metal anti-oxidation layer is formed on an inner surface”, is directed towards the process of making a non-metal anti-oxidation layer. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “before the first intermetallic compound layer is formed, a non-metal anti-oxidation layer is formed on an inner surface” only requires a first intermetallic compound layer, which does not distinguish the invention from Xiao, who teaches the structure as claimed.
Regarding claim 13, Xiao teaches an interface metal layer (Fig 1 backside metallization 16, [0023] of translation) is formed between the heat conductor (Fig 1 thermal interface material 18, [0023] of translation) and the electronic component (Fig 1 semiconductor die 14, [0023] of translation)
Xiao fails to teach before the second intermetallic compound layer is formed, an interface metal layer is formed between the heat conductor and the electronic component.
The language, term, or phrase “before the second intermetallic compound layer is formed, an interface metal layer is formed”, is directed towards the process of making an interface metal layer. It is well settled that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. As such, the language “before the second intermetallic compound layer is formed, an interface metal layer is formed” only requires an interface metal layer and second intermetallic compound layer, which does not distinguish the invention from Xiao, who teaches the structure as claimed.
Claim Rejections - 35 USC § 103
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 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 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et. al. (CN 103441109 A), hereinafter Xiao, in view of Schwab et. al. (US 20240379615 A1), hereinafter Schwab.
Regarding claim 2, Xiao fails to teach the first intermetallic compound layer has a material and a thickness different from a material and a thickness of the second intermetallic compound layer.
Regarding the choice of having different material and thicknesses of the different intermetallic compounds, this particular combination would have been obvious to try. Xiao teaches a backside metal layer 16 can be made of one metal layer, two metal layers, or three or more metal layers ([0029] of translation). Further, Xiao teaches the materials that can be used in the layers ([0029] of translation). Schwab teaches intermetallic phases of materials are formed based on the thickness and composition of solderable regions ([0031]). In pursuing this arrangement in the device of Xiao, there are only two choices for the top most layer of the back side metal layer to achieve this result: having a different material as the topmost layer or reducing the layer number to have the topmost layer be a different material. One having ordinary skill in the art would recognize that the material and subsequent thickness of the intermetallic would change equally if the top most layer was a different material from that of the heat sink or if the number of layers was reduced such that the topmost layer was a different material, regardless of which of these two choices is chosen. That is, "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421.
In pursuing this arrangement, the first intermetallic compound layer would have a material and a thickness different from a material and a thickness of the second intermetallic compound layer.
Regarding claim 5, Xiao fails to teach the first intermetallic compound layer has a thickness greater than a thickness of the second intermetallic compound layer.
However, Xiao teaches a backside metal layer 16 can be made of one metal layer, two metal layers, or three or more metal layers ([0029] of translation). Further, Xiao teaches the materials that can be used in the layers ([0029] of translation). Schwab teaches intermetallic phases of materials are formed based on the thickness and composition of solderable regions ([0031]). The thickness of the intermetallic compounds is therefore a result-effective variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to vary, through routine optimization, the topmost layer of the backside metal layer as Schwab has identified the thickness of the intermetallic compounds as a result-effective variable. Further, one of ordinary skill in the art would have had a reasonable expectation of success to arrive at the first intermetallic compound layer having a thickness greater than a thickness of the second intermetallic compound layer, in order to achieve the desired balance between processing time and the thermal conductivity of the heat conductor, as taught by Xiao and Schwab. MPEP 2144.05.
Furthermore, the applicant has not presented persuasive evidence that the claimed thickness is for a particular purpose that is critical to the overall claimed invention (i.e., that the invention would not work without the specific claimed dimensions).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao et. al. (CN 103441109 A), hereinafter Xiao, in view of Bahari et. al. (“The equilibrium phase diagram of the copper–indium system: a new investigation,” Thermochimica Acta, Volume 401, Issue 2, 2003), hereinafter Bahari.
Xiao fail to teach the first intermetallic compound layer is made of Cu2In.
However, Bahari teaches Cu2In is also formed during the heating of copper and indium (Fig 6 ƞ-phase, Conclusion). One having ordinary skill in the art before the effective filing date of the claimed invention would recognize that a layer of Cu2In would also exist since it would be formed at the same time as the layer of Xiao in a region with different copper-indium composition. MPEP 2144.01
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao et. al. (CN 103441109 A), hereinafter Xiao, in view of Schwab et. al. (US 20240379615 A1), hereinafter Schwab, in further view of Singleton et. al. (“The In-Ni (Indium-Nickel) System,” Bulletin of Alloy Phase Diagrams 9, 592–597, 1988), hereinafter Singleton, with supporting information from Minic et. al. (“Experimental investigation and thermodynamic calculations of the Cu–In–Ni phase diagram,” Journal of Alloys and Compounds, Vol 617, 2014), hereinafter Minic.
Xiao fails to teach the second intermetallic compound layer is made of Ni3In7.
Regarding the choice of having the second intermetallic compound being a nickel-indium phase, this particular combination would have been obvious to try. Xiao teaches a backside metal layer 16 can be made of one metal layer, two metal layers, or three or more metal layers ([0029] of translation). Further, Xiao teaches the materials that can be used in the layers, nickel being in the second layer ([0029] of translation). Schwab teaches intermetallic phases of materials are formed based on the thickness and composition of solderable regions ([0031]). In pursuing this arrangement in the device of Xiao, there are only two choices for the top most layer of the back side metal layer to achieve this result: having a nickel as the topmost layer or reducing the layer number to have the topmost layer be nickel. One having ordinary skill in the art would recognize that the material and subsequent thickness of the intermetallic would change equally if the top most layer was nickel or if the number of layers was reduced such that the topmost layer was nickel, regardless of which of these two choices is chosen. That is, "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421.
In pursuing this arrangement, the second intermetallic compound would be a layer of nickel-indium phase.
However, Singletom teaches Ni28In72 is also formed during the heating of nickel and indium (Table 3, Equilibrium Diagram section). Minic discloses the phase name Ni3In7 corresponds to the common name Ni28In72 (Table 1). One having ordinary skill in the art before the effective filing date of the claimed invention would recognize that a layer of Ni3In7 would also exist since it would be formed at the same time as the layer of Xiao in a region with different copper-indium composition. MPEP 2144.01
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et. al. (CN 103441109 A), hereinafter Xiao, in view of Houle et. al. (US 20040262743 A1), hereinafter Houle.
Regarding claim 8, Xiao fails to teach a metal anti-oxidation layer formed on an outer surface of the heat dissipation structure.
However, Houle teaches a metal anti-oxidation layer (Fig 3C not shown nickel coating, [0027]) formed on an outer surface of the heat dissipation structure (Fig 3C heat spreader 320, [0027] corresponds to Xiao: Fig 1 heat sink 20, [0022] of translation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Xiao to incorporate the teachings of Houle by having a coating on the exterior surface of a heat dissipation structure. This would aid in controlling the chemical properties of the heat dissipation structure [0027]).
Regarding claim 9, Xiao as modified in claim 8 teaches the metal anti-oxidation layer (Fig 3C not shown nickel coating, [0027]) is made of metal nickel (Ni) (nickel, [0027]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao et. al. (CN 103441109 A), hereinafter Xiao.
Xiao fails to teach the non-metal anti-oxidation layer is made of an imidazole compound.
However, Xiao teaches applying flux to a copper surface (surface of topmost surface backside plated metal is copper, [0033] of translation) to remove oxidation, ensuring good bonding ([0035]). One having ordinary skill in the art before the effective filing date of the claimed invention would recognize the flux is removed during the heating process. Further, one having ordinary skill in the art before the effective filing date of the claimed invention would recognize that the use of flux on the backside plated metal can also be applied to the inner surface of the heat dissipation structure to ensure a good bond with the thermal interface material. MPEP 2144.07
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Xiao et. al. (CN 103441109 A), hereinafter Xiao, in view of Hua et. al. (US 20220367317 A1), hereinafter Hua.
Xiao fails to teach the interface metal layer is a nickel/gold (Ni/Au) layer.
However, Hua teaches the interface metal layer (Fig 2 layer comprising layer 9 and layer 10 corresponds to Xiao: Fig 1 backside metallization 16, [0023] of translation) is a nickel/gold (Ni/Au) layer (layer 9 is Au and layer 10 is Ni layer, [0052]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Xiao to incorporate the teachings of Hua by having the interface metal layer be a nickel/gold layer. This would improve the wettability for connecting the indium layer to the nickel layer ([0052]).
Conclusion
The Examiner has pointed out particular references contained in the prior art of record within the body of this action for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN L LEE whose telephone number is (703)756-1921. The examiner can normally be reached Monday - Friday 8:30 am - 5 pm (ET).
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, STEVEN GAUTHIER can be reached at (571)270-0373. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALVIN L LEE/
Examiner, Art Unit 2813
/STEVEN B GAUTHIER/Supervisory Patent Examiner, Art Unit 2813
Prosecution Insights