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 .
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.
Allowable Subject Matter
Claims 17-20 are allowed.
Claims 7 and 14 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.
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 1-6, 8-12 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 5-15 of U.S. Patent No. 12424511 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the application claims can be found in patent claim (as the application claims fully encompass the patent claims). The difference between the application claims and the patent claims lies in the fact that the patent claims include many more elements and is thus much more specific. Thus the invention of the claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the claims of the patent, it is not patentably distinct from the claims of the patent.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hung et al., US 20200219786 A1.
Hung anticipates:
11. A method of forming a semiconductor structure, the method comprising (see fig. 9):
attaching a first die (106) to a center region of a first surface of an interposer (110);
attaching a second die (e.g. left 108) and a third die (e.g. right 108) to peripheral regions of the first surface of the interposer, wherein the first die is between the second die and the third die;
forming a molding material (118+120) on the first surface of the interposer around the first die, the second die, and the third die;
forming a first thermal interface material (TIM) film (e.g. center 124), a second TIM film (e.g. left 124), and a third TIM film (e.g. right 124) on the first die, the second die, and the third die, respectively, wherein the first TIM film (e.g. center 124) is formed of a dielectric material (e.g. See para. [0024] disclosing the TIM comprises polymer with thermal conductive fillers. The polymer is a dielectric material.), wherein the second TIM film (e.g. left 124) and the third TIM film (e.g. right 124) are formed of an electrically conductive material (e.g. See para. [0024] disclosing the TIM comprises polymer with thermal conductive fillers. The thermal conductive fillers is an electrically conductive material.);
attaching a second surface of the interposer (110) to a first side of a substrate (104); and
attaching a heat-dissipation lid (126) to the first side of the substrate (104), wherein the first die, (106) the second die (e.g. 108 left), the third die (e.g. 108 right), the first TIM film (e.g. center 124), the second TIM film (e.g. left 124), and the third TIM film (e.g. right 124) are disposed in an enclosed space between the heat-dissipation lid (126) and the substrate (104). See Hung at para. [0001] – [0051], figs. 1-17.
12. The method of claim 11, wherein the second TIM film (e.g. left 124), and the third TIM film (e.g. right 124) are formed to be thicker than the first TIM film (e.g. center 124), fig. 9.
13. The method of claim 12, wherein the first die, (106) the second die (e.g. 108 left), the third die (e.g. 108 right) and the molding material (118+120) have a coplanar upper surface facing away from the interposer (110), fig. 9.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hung, as applied to claim 11 above, in view of Swaroop et al., US Publication No. 2009/0068441 A1.
Regarding claim 15:
Hung teaches all the limitations of claim 1 above, and further teaches the TIM comprises polymer with thermal conductive fillers, para. [0024]
Hung does not expressly teach:
wherein the dielectric material is a mixture of carbon and a polymer, wherein the electrically conductive material is a mixture of an adhesive material and at least one metal filler.
In an analogous art, Swaroop teaches a TIM may comprise at least one filler dispersed in a polymer. The TIM material may be in the form of a solid or in the form of a highly viscous liquid, such as an adhesive, grease, or paste. The filler may be carbon black or a metal or “combinations thereof”. See Swaroop at para. [0013] – [0014].
One of ordinary skill in the art modifying Hung’s TIM with Swaroop to form the TIM to comprise a polymer with fillers comprising carbon black and metal (-i.e. “combinations thereof”) in an adhesive form would arrive at the limitations recited in the claim: “the dielectric material is a mixture of carbon and a polymer” and “the electrically conductive material is a mixture of an adhesive material and at least one metal filler”
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the teachings of Hung with the teachings of Swaroop because “…there is a need for more effective fillers that provide thermal interface materials having significantly improved thermal conductivity over current materials. As semiconductor devices become more powerful, the attendant heat dissipation presents a more significant problem seeking a technical solution.” (e.g. See Swaroop at para. [0009])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele Fan whose telephone number is 571-270-7401. The examiner can normally be reached on M-F from 7:30 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff Natalini, can be reached on (571) 272-2266. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele Fan/
Primary Examiner, Art Unit 2818
13 August 2026
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