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 .
Priority
Acknowledgment is made of Applicant's claim for foreign priority based on an application filed in the Republic of Korea on 11/23/2023. It is noted, however, that Applicant has not filed a certified copy of the KR10-2023-0164493 application as required by 37 CFR 1.55.
Claim Interpretation
The claims will be read under the broadest reasonable interpretation standard outlined in
MPEP § 2111.01.
Examiner’s Note
While not rising to the level of an objection, claim 20 recites “greater than/less than” the reference value, whereas parallel claims 4/13 recite “greater than/less than or equal to” the reference value. If this was in error, appropriate correction is advised.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because they are directed to ineligible patent subject matter. The claims are directed to the Abstract Idea groupings of mental processes under MPEP § 2106.04(a)(2)(III) and mathematical calculations under MPEP § 2106.04(a)(2)(I). These are judicial exceptions under Step 2A, Prong One of the framework established by the cases of Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012). See MPEP § 2106.04(II).
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Step 1: The claims in question are directed to methods for “detecting defective semiconductor package[s].” Methods (processes) are a statutory category. See MPEP 2106.03(I), “NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316, 75 USPQ2d 1763, 1791 (Fed. Cir. 2005) ("[A] process is a series of acts.") (quoting Minton v. Natl. Ass’n. of Securities Dealers, 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1681 (Fed. Cir. 2003)). As defined in 35 U.S.C. 100(b), the term "process" is synonymous with "method."”. (Step 1: Yes).
Step 2A, Prong One: As explained in MPEP 2106.04(II), a claim “recites” a judicial
exception when the judicial exception is “set forth” or “described” in the claim. Here, each
claim recites or depends upon the mental processes of obtaining images, measuring values, and determining if an item is defective. (Claim 1, “obtaining at target image…measuring a shift value…comparing the shift value…”; Claim 4, “determining that the package substrate is defective/not defective”; Claim 12, “obtained by extracting an image captured by a camera…”; Claim 19, “extracting a target image from the image”). The claims further recite or depend upon mathematical calculations. (Claim 1, “obtaining a first center position value…obtaining a second center position value…defining a difference between the first center position and the second center position value as the shift value”; Claim 2, “the first center position value is an average of position values of the pair of adjacent connection terminal arrays in a second direction perpendicular to the first direction”; Claim 10, “wherein the reference value is in a range of about 200 µm to about 500 µm”)
The claims are recited at a high level of generality and lack any specifics precluding such
an analysis from being interpreted under the mental processes grouping of “practically performed
in the mind” (see also MPEP § 2106.04(a)(2) identifying how e.g. a use of pen and paper, a ruler,
or a computer as a tool (to assist in visually/mentally analyzing/observing acquired
images/video) fails to preclude such an interpretation under the mental processes judicial
exception).
Regarding artificial intelligence, to the extent it is implicated, claims 5 and 15’s “based on a U-Net model” are comparable to Claim 2 of Example 47 of the July 2024 PEG regarding subject matter eligibility (https://www.uspto.gov/sites/default/files/documents/2024-AISMEUpdateExamples47-49.pdf). As stated therein, an artificial intelligence’s analyses, detections, and reinforcement learnings may be practically performed in the human mind. To the extent mathematical calculations are required to operate and train the artificial intelligence in image analysis, the separate judicial exception is also implicated.
As such, the mere usage of a U-Net model does not elevate these claims beyond mathematical calculations and mental processes. (Step 2A, Prong One: Yes).
Step 2A, Prong Two: If Prong One of Step 2A is met, the examiner must consider (1)
whether there are any ‘additional elements’ recited in the claim beyond the judicial exception,
and (2) evaluate those additional elements individually and in combination to determine whether
the claim as a whole integrates the exception into a practical application. See MPEP §
2106.04(d).
Limitations the courts have found indicative of integration include: an improvement in
the functioning of a computer, or an improvement to other technology or technical field, as
discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a); applying or using a judicial exception to
effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in
MPEP § 2106.04(d)(2); implementing a judicial exception with, or using a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the claim, as discussed
in MPEP § 2106.05(b); effecting a transformation or reduction of a particular article to a
different state or thing, as discussed in MPEP § 2106.05(c); and applying or using the judicial
exception in some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
Limitations that the courts have found non-indicative of integration include: merely
reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including
instructions to implement an abstract idea on a computer, or merely using a computer as a tool to
perform an abstract idea, as discussed in MPEP § 2106.05(f); adding insignificant extra-solution
activity to the judicial exception, as discussed in MPEP § 2106.05(g); and generally linking the
use of a judicial exception to a particular technological environment or field of use, as discussed
in MPEP § 2106.05(h).
As an additional note, ‘additional elements’ are generally limitations excluded from
interpretation under the Abstract Idea groupings, and may comprise portions of limitations
otherwise identified as falling under those Abstract Idea groupings of the 2019 PEG (e.g. any
‘determination’ that may be made mentally by a user, neural network and/or generic computer hardware is considered under the ‘apply it’ considerations of 2106.05(f)). Any ‘providing’/outputting broadly, and ‘collection/input’ of data (i.e obtaining a target image), also fail(s) to integrate at least in view of MPEP 2106.05(g) (extra-solution data gathering/output) and/or 2106.05(h) as ‘generally linking’ the exception to a field of use involving machine learning and/or imagery so acquired (e.g. the use of a computer/camera to acquire said image broadly). The same determination holds for dependent claims that serve to limit the collection/output of data/images (by means of what is collected based on recited conditions) and/or introduce limitations generally linking to a field of use.
None of the instant claims appear to explicitly/clearly capture/recite any disclosed
improvement in technology (see MPEP 2106.05(a), with note that ‘functioning of a computer’
concerns functions integral to the way a computer operates and not ‘functions’ that a generic
computer can be programmed/adapted to perform (see also 2106.05(f))) and any ‘additional
elements’, even when considered in combination, fail to integrate at Prong Two of Step 2A
accordingly. Integration in view of subsection (a) requires an identification of the manner in
which the improvement is achieved, to be explicitly and specifically recited in the claims, as
‘additional elements’ precluded from interpretation under any of the Abstract Idea groupings
(since the improvement cannot be to the exception itself). With reference to MPEP 2106.05(a):
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981))
As applicable here, additional limitations not directed to a judicial exception fail to
integrate at Prong Two of Step 2A. Claim 1 recites a “semiconductor package” [further limited by attributes of the semiconductor]; Claim 5/15 recites a “U-Net model”. The incorporation of conventional semiconductor and machine-learning systems does little more than generally link the judicial exceptions of mental processes and mathematical calculations to a field-of-use and technological environment. See MPEP §§ 2106.05(h); 2106.05(f).
As recited by paragraphs [0047] and [0050] of the claimed invention’s specification, the U-Net of claim 5/15 is understood to perform a general segmentation task, which can be achieved by other high-level, known models outlined in [0050]. The examiner finds comparable the precedent of Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016), outlined in MPEP § 2106.05(h). As described by the MPEP, “The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like)”. The U-Net here performs similarly. The task of segmentation may be achieved through other various other means. [0050] “However, a method of measuring shift values of a pair of window patterns is not necessarily limited to the U-Net model”. The use of the U-Net as claimed is even more limited. Claim 5/15 does not recite using the U-Net to measure shift values as a whole, but rather uses the U-Net to simply identify the window pattern positions (from which shift values are then computed).
Alternatively, the task of segmentation can be thought of under 2106.05(f), as applying the abstract idea of image segmentation to a computer. To the extent a U-Net is utilized, the additional element must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965).”, MPEP § 2106.05(f). While the words “apply it” are not explicitly used, the examiner finds claim 5/15 comparable in structure.
Claim 1 recites “obtaining a target image”; Claim 19 recites “extracting a target image from the image”. To the extent image capture via a computing/imaging device is implicated, these limitations constitute insignificant extra-solution activity under MPEP § 2106.05(g). Specifically, the limitations amount to no more than necessary data inputting under rationale 3 of MPEP § 2106.05(g).
Even when viewed in combination, any additional elements present do not integrate the
recited judicial exception into a practical application (Step 2A, Prong Two: No), and the claims
are directed to the judicial exception. (Revised Step 2A: Yes → Step 2B).
Step 2B: If Prong Two of Step 2A is not met, the examiner must consider whether the
claim as a whole amounts to ‘significantly more’ than the recited exception, i.e., whether any
‘additional element’, or combination of additional elements, adds an inventive concept to the
claim. The considerations of Step 2A Prong 2 and Step 2B overlap, but differ in that 2B also
requires considering whether the claims feature any “specific limitation(s) other than what is
well-understood, routine, conventional activity in the field” (WURC) (MPEP § 2106.05(d)).
Such a limitation if specifically recited however, must still be excluded from interpretation under
any of the Abstract Idea groupings. Step 2B further requires a re-evaluation of any additional
elements drawn to extra-solution activity in Step 2A (e.g. image capture) – however no limitations appear directed to any novel image capture per se. Limitations not indicative of an inventive concept/‘significantly more’ include those that are not specifically recited (instead recited at a high level of generality), those that are established as WURC (a plurality of cited references serve to evidence the WURC nature of ‘analysis’ based at least in part on corroborating/additional ground data), and/or those that are not ‘additional elements’ by nature of their analysis at Prong One of Step 2A (i.e. directed to the exception – see above re. deciding that a second acquisition may be advantageous/desired). The July 2024 PEG describes that an improvement/ inventive concept (for ‘significantly more’ determination(s)) cannot be to the judicial exception itself.
On page 9 of the July 2024 PEG, “using the trained ANN” failed at Step 2A under MPEP § 2106.05(f). For purposes of Step 2B analysis, it was further determined that because of this, the trained ANN itself could not provide an inventive concept (for “significantly more” determination purposes). Here, the U-Net as recited by claims 5/15 fails under MPEP §§ 2106.05(h) and 2106.05(f), for the reasons outlined above. Accordingly, the U-Net cannot also serve as a meaningful limitation.
Otherwise, the elements of image capture reflect what is well understood, routine, and conventional in the field, as evidenced by the body of prior art cited by the examiner in this office action (Step 2B: No).
Allowable Subject Matter
Claims 1-20 are free of the prior art rejection. Final allowability is contingent on overcoming the 101 rejection presented in the office action.
With respect to claim 1, the prior art fails to teach the comparison of “connection terminal array” and “window pattern” positions as a means for determining defects in a semiconductor. The prior art instead focuses primarily on ball-grid arrays. See Neeluru et. al Void Region Segmentation in Ball Grid Array Using U-Net Approach and Synthetic Data; Gao et. al A Line-Based-Clustering Approach for Ball Grid Array Component Inspection in Surface-Mount Technology (for determining defectiveness based on ball grid arrays); See Huang et. al Package-on-package Assembly Yield Assessment in the ODM/EMS Environment Using Monte Carlo Simulation. To the extent “window patterns” are discussed, it is in separate contexts. It would not have been obvious to one of ordinary skill in the art to bridge the gap in the prior art – to measure the “shift value” as outlined, using the specific positions (amongst the plurality of positions) of connection terminal arrays and window patterns as outlined. The evidence before the examiner also fails to show sufficient rationale to a person of ordinary skill in the art, that the specific values chosen could be selected and combined in the manner disclosed to produce the ultimate result of defect determination.
Claims 11 and 19 are functionally parallel to claim 1, though narrower in scope.
Additional References
Additionally cited references (see attached PTO-892) otherwise not relied upon above have been made of record in view of the manner in which they evidence the general state of the art.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH WILLIAM BOYAR whose telephone number is (571)272-8392. The examiner can normally be reached 8:30 – 5:00 EST, Monday – Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chan Park can be reached at 571-272-7409. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOAH W BOYAR/Examiner, Art Unit 2669
/CHAN S PARK/Supervisory Patent Examiner, Art Unit 2669
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