Prosecution Insights
Last updated: October 02, 2026
Application No. 18/837,603

UNDERFILL MATERIAL, SEMICONDUCTOR PACKAGE AND METHOD FOR PRODUCING SEMICONDUCTOR PACKAGE

Non-Final OA §102§103
Filed
Aug 11, 2024
Priority
Feb 28, 2022 — nonprovisional of PCT/JP2022/008375 +1 more
Examiner
INOUSSA, MOULOUCOULAY
Art Unit
Tech Center
Assignee
RESONAC Corporation
OA Round
1 (Non-Final)
86%
Grant Probability
Favorable
1-2
OA Rounds
3m
Est. Remaining
94%
With Interview

Examiner Intelligence

Grants 86% — above average
86%
Career Allowance Rate
676 granted / 790 resolved
+25.6% vs TC avg
Moderate +8% lift
Without
With
+8.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
26 currently pending
Career history
801
Total Applications
across all art units

Statute-Specific Performance

§101
2.4%
-37.6% vs TC avg
§103
44.3%
+4.3% vs TC avg
§102
38.0%
-2.0% vs TC avg
§112
15.1%
-24.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 790 resolved cases

Office Action

§102 §103
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 § 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)(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 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zheng et al. (US 2024/0279525 A1 hereinafter referred to as “Zheng”). With respect to claim 1, Zheng discloses an underfill material comprising a curable resin component and inorganic particles, wherein a ratio on a number basis of particles (c3) with a particle diameter of 0.5 µm or less included in the inorganic particles is 10% or less of the total inorganic particles, and a ratio on a number basis of particles (c2) with a particle diameter of 3 µm or more is 5% or less of the total inorganic particles (see abstract, wherein a curable silicone composition including: (a1) a vinyldimethylsiloxy-terminated polydimethylpolysiloxane having a viscosity in a range of 30-400 milliPascal*seconds, (a2) a silicon-hydride functional crosslinker, and (a3) a hydrosilylation catalyst, where the molar ratio of silicon-hydride functionality from the crosslinker to vinyl functionality is in a range of 0.5:1 to 1:1; (B) a filler treating agent comprising one or both of an alkyl trialkoxysilane and a mono-trialkoxysiloxy terminated dimethylpolysiloxane; and (C) a thermally conductive filler mixture including (c1) 40-55 wt % of aluminum nitride fillers, containing a blend of: (c1-a) 15-41 wt % of spherical aluminum nitride particles having a D50 particle size of 100 micrometers or more, and (c1-b) spherical or irregular shaped aluminum nitride particles having a D50 particle size of 20-80 micrometers; (c2) spherical aluminum oxide particles having a D50 particle size of 1-5 micrometers; and (c3) 10-20 wt % of irregular zinc oxide particles having a D50 particle size of 0.1-0.5 micrometer; see Par.[0054] wherein the spherical aluminum oxide particles (c2) have a D50 particle size of 1 μm or more, and can be 1.2 μm or more, 1.5 μm or more, 1.8 μm or more, or even 2 μm or more while at the same time typically have a D50 particle size of 5 μm or less, 4.8 μm or less, 4.5 μm or less, 4.2 μm or less, 4 μm or less, 3.8 μm or less, 3.5 μm or less, 3.2 μm or less, 3 μm or less, 2.8 μm or less, or even 2.5 μm or less; the spherical aluminum oxide particles (c2) may be present at a centration of 41 wt % or less, 40 wt % or less, 39 wt % or less, 38% or less, 37 wt % or less, 36 wt % or less, 35 wt % or less, 33 wt % or less, 32 wt % or less, or even 31 wt % or less (e.g.; 10 wt %), based on the weight of the thermally conductive composition). 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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hatakeyama et al. (US 2017/0022407 A1 hereinafter referred to as “Hatakeyama”) in view of Zheng. With respect to claim 1, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), an underfill material comprising a curable resin component and inorganic particles, wherein a ratio on a number basis of particles with a particle diameter of 3 µm included in the inorganic particles is 60% or less of the total inorganic particles, and a ratio on a number basis of particles with a particle diameter of 20 µm is 40% of the total inorganic particles (see Par.[0046]-[0059] wherein the polymer composition, it is important that the aluminum nitride particle contains, as an essential component, a first particle having a maximum peak value of a particle size distribution curve in a range of 20 μm to 200 μm, and it is important that the content of the first particle is from 40 to 100 mass %; the polymer composition, the aluminum nitride particle may contain, as an optional component, a second particle having a maximum peak value of the particle size distribution curve in a range of 0.1 μm to 10 μm and may contain the second particle such that the content thereof is 60 mass % or less; see Par.[0060]-[0066] wherein As illustrated in FIG. 2, when the second particle is incorporated together with the first particle and the particle size distribution curve consequently becomes a curve showing a maximum in an area of 0.1 μm to 10 μm in addition to the area of 20 μm to 200 μm and is one continuous curve showing one minimum between those two maximums, the ratio between the first particle and the second particle is preferably adjusted so as to maintain a predetermined relationship among the minimum value and two maximum values). However, Hatakeyama does not explicitly disclose a ratio on a number basis of particles with a particle diameter of 0.5 pm or less included in the inorganic particles is 10% or less of the total inorganic particles, and a ratio on a number basis of particles with a particle diameter of 3 pm or more is 5% or less of the total inorganic particles. Even though Hatakeyama does not disclose the first and second particle size and fraction ranges, the said range is predictable by simple engineering optimization motivated by a design choice such as optimizing thermal conductivity of the overall underfill material. In cases like the present, where patentability is said to be based upon particular chosen dimensions or upon another variable recited within the claims, applicant must show that the chosen dimensions are critical. As such, the claimed dimensions appear to be an obvious matter of engineering design choice and thus, while being a difference, does not serve in any way to patentably distinguish the claimed invention from the applied prior art. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Kuhle, 526 F2d. 553,555,188 USPQ 7, 9 (CCPA 1975). Zheng discloses an underfill material comprising a curable resin component and inorganic particles, wherein a ratio on a number basis of particles (c3) with a particle diameter of 0.5 µm or less included in the inorganic particles is 10% or less of the total inorganic particles, and a ratio on a number basis of particles (c2) with a particle diameter of 3 µm or more is 5% or less of the total inorganic particles (see abstract, wherein a curable silicone composition including: (a1) a vinyldimethylsiloxy-terminated polydimethylpolysiloxane having a viscosity in a range of 30-400 milliPascal*seconds, (a2) a silicon-hydride functional crosslinker, and (a3) a hydrosilylation catalyst, where the molar ratio of silicon-hydride functionality from the crosslinker to vinyl functionality is in a range of 0.5:1 to 1:1; (B) a filler treating agent comprising one or both of an alkyl trialkoxysilane and a mono-trialkoxysiloxy terminated dimethylpolysiloxane; and (C) a thermally conductive filler mixture including (c1) 40-55 wt % of aluminum nitride fillers, containing a blend of: (c1-a) 15-41 wt % of spherical aluminum nitride particles having a D50 particle size of 100 micrometers or more, and (c1-b) spherical or irregular shaped aluminum nitride particles having a D50 particle size of 20-80 micrometers; (c2) spherical aluminum oxide particles having a D50 particle size of 1-5 micrometers; and (c3) 10-20 wt % of irregular zinc oxide particles having a D50 particle size of 0.1-0.5 micrometer; see Par.[0054] wherein the spherical aluminum oxide particles (c2) have a D50 particle size of 1 μm or more, and can be 1.2 μm or more, 1.5 μm or more, 1.8 μm or more, or even 2 μm or more while at the same time typically have a D50 particle size of 5 μm or less, 4.8 μm or less, 4.5 μm or less, 4.2 μm or less, 4 μm or less, 3.8 μm or less, 3.5 μm or less, 3.2 μm or less, 3 μm or less, 2.8 μm or less, or even 2.5 μm or less; the spherical aluminum oxide particles (c2) may be present at a centration of 41 wt % or less, 40 wt % or less, 39 wt % or less, 38% or less, 37 wt % or less, 36 wt % or less, 35 wt % or less, 33 wt % or less, 32 wt % or less, or even 31 wt % or less (e.g.; 10 wt %), based on the weight of the thermally conductive composition). Hatakeyama and Zheng are analogous art because they are all directed to a filing particle of thermal conductive material, and one of ordinary skill in the art would have had a reasonable expectation of success by modifying Hetakeyama to include Zheng because they are from the same field of endeavor. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Hatakeyama particle sizes within thermal conductive material by including specific sizes and proportions of first and second particle within thermal material as taught by Zheng in order to incorporate a even smallest size of boron nitride particle or an aluminum nitride particle, which exhibits particularly high thermal conductivity among inorganic fillers, into the thermal composition in a specific lower ratio so as attempt to achieve a high volume filling of particles by adjusting the particle size distribution thereby controlling the interface conductivity of overall material useful for dissipating elevated heat generated in powerful electronic devices. With respect to claim 2, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), the underfill material, wherein the curable resin component comprises an epoxy resin (see Par.[0075]-[0096] wherein incorporation of the epoxy resin into the polymer composition of this embodiment, an epoxy resin that is liquid, semi-solid or solid at normal temperature (for example, 20° C.) may be employed; specifically, examples of the epoxy resin include an aromatic epoxy resin such as bisphenol-type epoxy resin (e.g., bisphenol A epoxy resin, bisphenol F epoxy resin, bisphenol S epoxy resin, hydrogenated bisphenol A epoxy resin, dimer acid-modified bisphenol epoxy resin), a novolak-type epoxy resin (e.g., phenol novolak epoxy resin, cresol novolak epoxy resin, biphenyl epoxy resin), a naphthalene-type epoxy resin, a fluorene-type epoxy resin (e.g., bisaryl fluorene epoxy resin), and a triphenylmethane-type epoxy resin (e.g., trishydroxyphenylmethane epoxy resin); a nitrogen-containing cyclic epoxy resin such as triepoxypropyl isocyanurate (triglycidyl isocyanurate) and hydantoin epoxy resin; an aliphatic epoxy resin; an alicyclic epoxy resin (for example, a dicyclo ring-type epoxy resin such as dicyclopentadiene epoxy resin); a glycidylether-type epoxy resin; and a glycidylamine-type epoxy resin). With respect to claim 3, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), the underfill material, wherein the epoxy resin comprises at least one type selected from a group consisting of a bisphenol type epoxy resin, a naphthalene type epoxy resin, and a tri- or higher functional glycidylamine type epoxy resin (see Par.[0075]-[0096] wherein incorporation of the epoxy resin into the polymer composition of this embodiment, an epoxy resin that is liquid, semi-solid or solid at normal temperature (for example, 20° C.) may be employed; specifically, examples of the epoxy resin include an aromatic epoxy resin such as bisphenol-type epoxy resin (e.g., bisphenol A epoxy resin, bisphenol F epoxy resin, bisphenol S epoxy resin, hydrogenated bisphenol A epoxy resin, dimer acid-modified bisphenol epoxy resin), a novolak-type epoxy resin (e.g., phenol novolak epoxy resin, cresol novolak epoxy resin, biphenyl epoxy resin), a naphthalene-type epoxy resin, a fluorene-type epoxy resin (e.g., bisaryl fluorene epoxy resin), and a triphenylmethane-type epoxy resin (e.g., trishydroxyphenylmethane epoxy resin); a nitrogen-containing cyclic epoxy resin such as triepoxypropyl isocyanurate (triglycidyl isocyanurate) and hydantoin epoxy resin; an aliphatic epoxy resin; an alicyclic epoxy resin (for example, a dicyclo ring-type epoxy resin such as dicyclopentadiene epoxy resin); a glycidylether-type epoxy resin; and a glycidylamine-type epoxy resin). With respect to claim 4, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), the underfill material, comprising a surface treatment agent, wherein a coating rate of the inorganic particles coated by the surface treatment agent (see Par.[0143]-[0147] wherein the polymer forming the dry coating film (i.e.; coating film formation has a given formation rate) is a thermosetting resin, the dry coating film may be heated to adjust the curing degree or the dry coating film may be put into a completely cured (C-stage) state). However, Hatakeyama does not explicitly teach a coating rate of the inorganic particles coated by the surface treatment agent is 50% or more. Even though Hatakeyama does not disclose a coating rate of the inorganic particles coated by the surface treatment agent is 50% or more, the said range is predictable by simple engineering optimization motivated by a design choice such cost effectiveness of coating. In cases like the present, where patentability is said to be based upon particular chosen dimensions or upon another variable recited within the claims, applicant must show that the chosen dimensions are critical. As such, the claimed dimensions appear to be an obvious matter of engineering design choice and thus, while being a difference, does not serve in any way to patentably distinguish the claimed invention from the applied prior art. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Kuhle, 526 F2d. 553,555,188 USPQ 7, 9 (CCPA 1975). With respect to claim 5, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), a semiconductor package comprising a substrate/(B-stage sheet), a semiconductor element, and a cured product of the underfill material (see Par.[0211]-[0217] wherein a B-stage sheet having a thickness of 400 μm, where the dry coating film was stacked in 4 layers). With respect to claim 6, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), the semiconductor package, wherein the cured product is disposed in a void between the substrate and the semiconductor element (see Par.[0251] wherein the C-stage sheet having a thickness, the percentage of voids (porosity) contained in the C-stage sheet was evaluated). With respect to claim 7, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), the semiconductor package, further comprising an interposer disposed between the substrate and the semiconductor element (see Par.[0211]-[0217] wherein a B-stage sheet having a thickness of 400 μm, where the dry coating film was stacked in 4 layers). With respect to claim 8, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), the semiconductor package, wherein the cured product is disposed in at least one selected from a group consisting of a void between the substrate and the interposer and a void between the interposer and the semiconductor element (see Par.[0137]-[0139], [0190] wherein cooling and thereby curing the coating film produced in the coating film-forming step above to obtain a thermal conductive sheet. an epoxy resin and a phenol-based curing agent were charged into a vessel for exclusive use with a hybrid mixer; see Par.[0251] wherein the C-stage sheet having a thickness, the percentage of voids (porosity) contained in the C-stage sheet was evaluated). With respect to claim 9, Hatakeyama discloses, in Figs.1-2, 3(A)-3(B), a method for producing a semiconductor package, comprising: filling at least one selected from a group consisting of a void between a substrate and a semiconductor element, a void between the substrate and an interposer, and a void between the interposer and the semiconductor element with the underfill material; and curing the underfill material (see Par.[0137]-[0139], [0190] wherein cooling and thereby curing the coating film produced in the coating film-forming step above to obtain a thermal conductive sheet. an epoxy resin and a phenol-based curing agent were charged into a vessel for exclusive use with a hybrid mixer; see Par.[0251] wherein the C-stage sheet having a thickness, the percentage of voids (porosity) contained in the C-stage sheet was evaluated). Citation of Pertinent Prior Art The prior art made of record (e.g.; see PTO-892) and not relied upon is considered pertinent to applicant's disclosure. Examiner’s Telephone/Fax Contacts Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOULOUCOULAYE INOUSSA whose telephone number is (571)272-0596. The examiner can normally be reached Monday-Friday (10-18). 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, JEFF W NATALINI can be reached at 571-272-2266. 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. /Mouloucoulaye Inoussa/ Primary Examiner, Art Unit 2818
Read full office action

Prosecution Timeline

Aug 11, 2024
Application Filed
Aug 13, 2026
Non-Final Rejection mailed — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12751305
Submounts with Stud Protrusions for Semiconductor Packages
3y 2m to grant Granted Sep 29, 2026
Patent 12751298
SEMICONDUCTOR DEVICE
3y 1m to grant Granted Sep 29, 2026
Patent 12745629
ELECTRONIC DEVICES AND METHODS OF MANUFACTURING ELECTRONIC DEVICES
3y 0m to grant Granted Sep 22, 2026
Patent 12745462
ELECTROSTATIC DISCHARGE PROTECTION DEVICE
2y 10m to grant Granted Sep 22, 2026
Patent 12740170
IMAGE SENSOR INCLUDING MULTI-SPECTRAL FILTER AND ELECTRONIC DEVICE INCLUDING THE IMAGE SENSOR
2y 9m to grant Granted Sep 15, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
86%
Grant Probability
94%
With Interview (+8.2%)
2y 5m (~3m remaining)
Median Time to Grant
Low
PTA Risk
Based on 790 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month