DETAILED ACTION
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.
Response to Amendment/Restriction
Applicant’s election without traverse of Invention I and Claims 1-9 in the reply filed on June 11, 2026 is acknowledged. Thus, Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Election was made without traverse in the reply filed on June 11, 2026.
Specification
The title of the invention is broad and not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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) 1 and 6-8 are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by U.S. Patent Application Publication No. 2017/0117253 A1 to Yu et al. (“Yu”). As to claim 1, Yu discloses a structure for direct bonding, including a buried probe pad (204’) on a substrate (102, 202) for microelectronics, the structure comprising: the probe pad (204’) formed on a first side of the substrate (102, 202), the probe pad (204’) embedded in a first insulating layer (206), the probe pad (204’) having an upper surface sized for test contact; the first insulating layer (206) formed over the upper surface of the probe pad (204’) on the first side of the substrate (102, 202), the first insulating layer (206) prepared for direct bonding; and a second insulating layer (306) formed on a second side of the substrate (102, 202) opposite to the first side (See Fig. 1, Fig. 3, Fig. 4, Fig. 7, ¶ 0017, ¶ 0021, ¶ 0026, ¶ 0046, ¶ 0055, ¶ 0056, ¶ 0100, ¶ 0101). As to claim 6, Yu discloses further comprising: a first interconnect structure (104 closest to 104’, 204’) vertically between the first side of the substrate (102, 202) and a lower surface of the probe pad (204’); and a second interconnect structure (326s) embedded in the second insulating layer (306) on the second side of the substrate (102, 202), wherein the second interconnect structure (326s) and the second insulating layer (306) are prepared for direct bonding (See Fig. 3, ¶ 0046). Further regarding claims 1 and 6, the limitation “sized for test contact, prepared for direct bonding” is a product-by-process limitation that does not structurally distinguish the claimed invention over the prior art. It has been held it has been held that “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). As to claim 7, Yu further discloses wherein a sidewall of the first insulating layer (206), a sidewall of the substrate (102) are laterally coterminous (See Fig. 3).
As to claim 8, Yu discloses further comprising: an encapsulant (1004) formed under the second insulating layer (306) and laterally encapsulating the sidewalls of the substrate (102) and the first insulating layer (206); and at least one through dielectric via (TDV) (1006) penetrating through the encapsulant (1004) to extend along a thickness direction of the substrate (102) (See Fig. 7, ¶ 0100, ¶ 0101).
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2017/0117253 A1 to Yu et al. (“Yu”) as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2010/0044859 A1 to Yamaguchi et al. (“Yamaguchi”). The teaching of Yu has been discussed above. As to claim 2, although Yu does not further disclose wherein the probe pad comprises a probe mark from probing the probe pad, wherein the probe mark comprises: a concave portion; a protrusion surrounding the concave portion; and a flat portion surrounding the protrusion, wherein a plane along a top surface of the flat portion is between a bottommost portion of the concave portion and a topmost portion of the protrusion, Yamaguchi does disclose wherein the probe pad (11) comprises a probe mark (100) from probing the probe pad (11), wherein the probe mark (100) comprises: a concave portion (recess); a protrusion (around recess) surrounding the concave portion (recess); and a flat portion (flat surface) surrounding the protrusion (around recess), wherein a plane along a top surface of the flat portion (flat surface) is between a bottommost portion of the concave portion (recess) and a topmost portion of the protrusion (around recess) (See Fig. 2, ¶ 0007, ¶ 0054, ¶ 0055, ¶ 0056), where the probe mark is formed after the number of tests increases. As to claim 3, Yu in view of Yamaguchi further discloses wherein the first insulating layer (206/13, 17) surrounds the protrusion (around recess) (See Yu Fig. 3 and Yamaguchi Fig. 2).
As to claim 4, Yu in view of Yamaguchi further discloses wherein the first insulating layer (206/13, 17) comprises: a first insulating material (13) overlying the upper surface and a sidewall of the probe pad (204’/11); a second insulating material (17) over the first insulating material (13); and a blocking material (15) between the first (13) and second (17) insulating materials, wherein the blocking material (15) is different from the first (13) and second (17) insulating materials (See Yamaguchi Fig. 2, ¶ 0054, ¶ 0055, ¶ 0056).
As to claim 5, Yu in view of Yamaguchi further discloses wherein a topmost surface of the protrusion (around recess) is substantially level with a top surface of a first insulating material (13) (See Yamaguchi Fig. 2) (Notes: the substantially level is met by proximity).
Allowable Subject Matter
Claim 9 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
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/DAVID CHEN/Primary Examiner, Art Unit 2815
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