DETAILED ACTIONNotice 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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 14/717798, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In this instance, 14/717798 does not provide support for any of the claims. Further, there is a significant amount of language in the claims which does not find support in any written disclosure (of the instant application or any of the prior filed applications). As such, all of the subject matter rejected under 112(a), below is found to lack support or enablement in any of the prior filed applications (PRO 62/015459, 14/717798, 16/724319, 14/746045, 15/810050, 16/724319, and 17/688747).
In the reply filed 12/23/2025, the Applicant has merely alleged that there is support for the claimed embodiment(s) in the prior filed applications, but has given no evidentiary proof whatsoever to support this statement. There remains no written disclosure of the claimed embodiment(s) in the above noted documents.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 remains rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is literally nothing in the original specification or drawing figures which details any of: “forming within the substrate a plurality of redistribution layers (RDLs) and conductive vias defining a multilayer routing structure;
forming a first cavity extending inward from the first major surface and a second cavity extending inward from the second major surface;
forming a first ground mesh on a first redistribution layer and within the first cavity;
forming a second ground mesh on a second redistribution layer vertically offset from the first redistribution layer;
forming a third redistribution layer below the second redistribution layer, the third redistribution layer comprising signal routing conductors and power routing conductors;
forming a third ground mesh within the second cavity and on the second major surface of the substrate;
arranging the first ground mesh and the second ground mesh in a laterally staggered relationship that obstructs direct probing paths toward the signal routing conductors and the power routing conductors;
forming a first plurality of ground vias along a peripheral region of the substrate, the first plurality of ground vias extending continuously through an entire thickness of the substrate to define a three-dimensional probing barrier;
forming a second plurality of ground vias along a peripheral region of at least one of the first cavity or the second cavity” there is also no support whatsoever for “electrically coupling the security circuit to at least one of the first ground mesh, the second ground mesh, the third ground mesh, the first plurality of ground vias, or the second plurality of ground vias” (claim 1, lines 5-29 and 33-35).
The Applicant has incorrectly alleged that all of these newly added limitations find support in the drawing figures, however this is simply not true. The method steps of “forming” are not the same as simply “providing”. One could argue that the drawings show “providing” of some of the claimed structures (though not nearly all, as a majority of the above noted structures find no support whatsoever), are shown to be “provided” in the drawings, but absolutely none of them are shown as being “formed”, i.e. created or manufactured. Further, it is quite telling that the Applicant did not cite a single instance in the original specification where there is any support for these newly added steps. This is because there is not a single instance of the word “forming” anywhere in the specification. There is also no mention of “arranging”. Further, there is no disclosure of any third ground mesh, nor are there direct probing paths, there is no three-dimensional probing barrier, no vias along a peripheral region of at least one of the first cavity or the second cavity. The redistribution layers are only vaguely disclosed and certainly not in the detail now claimed. There is no mention of second or third redistribution layers, or any security circuit, much less one connected to every possible other claimed structure in the alternative. The term “offset” does not exist in the specification. This virtually entirely new claim has simply been created for the sake of overcoming rejections, and is not supported at all by the original disclosure. The Applicant is strongly encouraged to read the original specification and to determine what was actually originally disclosed, rather than to continue to create new embodiments without any basis in support.
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.
Claim 1 is rejected under 35 U.S.C. 112(b), 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 1 discloses “electrically coupling the security circuit to at least one of the first ground mesh, the second ground mesh, the third ground mesh, the first plurality of ground vias, or the second plurality of ground vias” (emphasis added; lines 33-35). Though alternative claim language is permissible and is not inherently indefinite, the above language is not an example of a permissible Markush group or set of defined alternatives. These cited alternatives result in 120 different methods recited in a single claim, and thus the scope of the claim is entirely impossible to determine. Moreover, it is not in the least believable that the Applicant performed all 120 of these methods, especially given that none of the claimed methods (as noted above) find support in the original disclosure. As such, the reader cannot possibly guess what the actually intended method inventive concept may be. Claim 1 has been examined as best understood.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive. The Applicants arguments regarding the 112(a) rejections have been addressed in full in the updated 112(a) rejections above. There is no support for the noted limitations of the claims, the drawing figures do not show any “forming” or arranging steps, and the specification never even mentions these terms or their analogs.
The Applicant has also not actually provided any arguments with regards to the previously applied prior art rejection to Booth Jr. et al. (US 2007/0087556 A1) IVO Buer et al. (US 20090146270 A1), but instead has simply copied and pasted the newly presented claim 1 with no arguments on the merits and no evidence of any kind. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to Hsu et al. (US 20080289869 A1), as well as the remaining cited prior art in the concurrently mailed PTO-892. All of those references appear to be especially pertinent to the claimed invention, as best understood.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729