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 .
This action is in response to the Continuation filed on 06/23/2025
This is a CON of 18/262,847 which is now a PAT 12,389,095 B2 which is a 371 of PCT/KR2022/001309 01/25/2022
Application claims a FP date of 01/25/2021
Claims 1-20 are pending
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant Application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/10/2025 and 05/27/2026 are in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98(a)(4). Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 1 is 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. Claim 1 recites “wherein the reinforcing plate and the bump part include different metal materials”. This feature is not described or disclosed in the instant Specifications or the drawing so as to reasonably convey to one skilled in the art .
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s) has not been disclosed. Evidence of concealment of the best mode is based upon the fact that Claim 1 recites “wherein the reinforcing plate and the bump part include different metal materials” which is not disclosed in the instant Specification or in the drawings.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim 1 recites “wherein the reinforcing plate and the bump part include different metal materials” which contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Number 12,389,095 B2. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the following table.
1. Application: A camera module comprising: a reinforcing plate;
1. Patent 12,389,095 B2: A camera module comprising: a reinforcing plate;
a bump part disposed on the reinforcing plate;
1. Patent 12,389,095 B2: a bump part disposed on the reinforcing plate;
an image sensor disposed on the bump part; and
1. Patent 12,389,095 B2: an image sensor disposed on the bump part and the first adhesive member;
a circuit board disposed on the reinforcing plate and including a cavity overlapping the bump part and the image sensor in a vertical direction,
1. Patent 12,389,095 B2: a circuit board disposed on the reinforcing plate and including a cavity vertically overlapping the bump part and the first adhesive member;
wherein the reinforcing plate and the bump part include different metal materials, and
6. Patent 12,389,095 B2: wherein the bump part is composed of a metal wire.
wherein at least a portion of the circuit board overlaps the image sensor and the bump part in a horizontal direction.
1. Patent 12,389,095 B2: wherein the image sensor overlaps the first adhesive member and the bump part in a vertical direction and the first adhesive member is spaced apart from the bump in a horizontal direction.
2. Application: wherein the bump part and the image sensor are disposed in the cavity of the circuit board.
1. Patent 12,389,095 B2: wherein the image sensor is supported by the bump part and is disposed in the cavity;
a circuit board disposed on the reinforcing plate and including a cavity vertically overlapping the bump part and the first adhesive member
3. Application: wherein the bump part and the image sensor are spaced apart from an inner wall of the cavity of the circuit board in the horizontal direction.
1. Patent 12,389,095 B2: first adhesive member is spaced apart from the bump part in a horizontal direction,
4. Application: wherein a lower surface of the bump part is in direct contact with the reinforcing plate.
2. Patent 12,389,095 B2: a first bump disposed on the reinforcing place and having a first height.
5. Application: wherein an upper surface of the bump part is in direct contact with the image sensor.
1. Patent 12,389,095 B2: wherein the image sensor is disposed on the bump part and the first adhesive member
6. Application: comprising: a first adhesive member disposed between the reinforcing plate the image sensor and disposed in the cavity, and
13. Patent 12,389,095 B2: a second adhesive member disposed between the circuit board and the reinforcing plate
wherein an upper surface of the first adhesive member is in direct contact with the image sensor.
1. Patent 12,389,095 B2: wherein the image sensor is disposed on the bump part and the first adhesive member
7. Application: wherein the image sensor overlaps the first adhesive member and the bump part in the vertical direction, and wherein the first adhesive member is spaced apart from the bump part in the horizontal direction.
1. Patent 12,389,095 B2: wherein the image sensor overlaps the first adhesive member and the bump part in a vertical direction, and the first adhesive member is spaced apart from the bump part in a horizontal direction
8. Application: wherein the bump part includes a plurality of bumps spaced apart and disposed along a circumferential direction of the first adhesive member.
4. Patent 12,389,095 B2: wherein the bump part is disposed in plurality on the region vertically overlapping the cavity on the upper surface of the reinforcing plate
9. Application: wherein each of the plurality of bumps includes: a first portion disposed on the reinforcing plate and having a first height; and
2. Patent 12,389,095 B2: wherein the bump part includes a first bump disposed on the reinforcing plate and having a first height; and
a second portion disposed on the first portion and having a second height different from the first height; and
2. Patent 12,389,095 B2: a second bump disposed on the first bump and having a second height different from the first height; and
wherein an upper surface of the second portion is in direct contact with a lower surface of the image sensor.
2. Patent 12,389,095 B2: wherein an upper surface of the second bump is in direct contact with a lower surface of the image sensor.
10. Application: wherein a side surface of each of the first portion and the second portion includes a curved surface.
3. Patent 12,389,095 B2: wherein a side surface of each of the first bump and the second bump includes a curved surface
11. Application: wherein a thickness of the bump part is same as a thickness of the first adhesive member.
5. Patent 12,389,095 B2: wherein a thickness of the bump part is same as a thickness of the first adhesive member
12. Application: wherein the bump part is formed of a metal wire.
6. Patent 12,389,095 B2: wherein the bump part is composed of a metal wire
13. Application: wherein the first height of the first portion is in a range of 50% to 90% of a diameter of the metal wire.
7. Patent 12,389,095 B2: wherein the first height of the bump is in a range of 50% to 90% of the diameter of the metal wire
14. Application: wherein the second height of the second portion is in a range of 115% to 170% of a diameter of the metal wire.
8. Patent 12,389,095 B2: wherein the second height of the second bump is in a range of 115% to 170% of the diameter of the metal wire
15. Application: wherein the first portion has a first width, and wherein the second portion has a second width smaller than the first width.
11. Patent 12,389,095 B2: wherein the first bump has a first width, and wherein the second bump has a second width smaller than the first width
16. Application: a second adhesive member disposed between the circuit board and the reinforcing plate, and
13. Patent 12,389,095 B2: a second adhesive member disposed between the circuit board and the reinforcing plate,
wherein a thickness of the second adhesive member is smaller than a thickness of the first adhesive member.
12. Patent 12,389,095 B2: wherein a thickness of the second adhesive member is smaller than a thickness of the first adhesive member
17. Application: wherein a plane area of the first adhesive member is 50% or less of a plane area of the image sensor.
14. Patent 12,389,095 B2: wherein an area of the first adhesive member is 50% or less of an area of the image sensor.
18. Application: wherein the plurality of bumps overlap a corner region of a lower surface of the image sensor in the vertical direction.
15. Patent 12,389,095 B2: wherein the plurality of bump parts overlap a corner region of the lower surface of the image sensor in an optical axis direction.
19. Application: wherein the image sensor includes an active pixel region, a non-pixel region around the active pixel region, and
17. Patent 12,389,095 B2: wherein the image sensor includes a pixel region and a non-pixel region around the pixel region, and
a dummy pixel region between the active pixel region and the non-pixel region, and
18. Patent 12,389,095 B2: a dummy pixel region between the active pixel region and the passivation non-pixel region;
wherein at least a portion of the bump part overlaps the active pixel region in the vertical direction.
17. Patent 12,389,095 B2: wherein the bump part overlaps the pixel region of the image sensor in an optical axis direction
20. Application: wherein the circuit board includes a first terminal, wherein the image sensor includes a second terminal, wherein the camera module comprises a connection wire electrically connecting the first terminal and the second terminal, and
19. Patent 12,389,095 B2: wherein the circuit board includes a first terminal, wherein the image sensor includes a second terminal, wherein the camera module comprises a connection wire electrically connecting the first terminal and the second terminal, and
wherein the connection wire includes a same material as a material of the metal wire constituting the bump part.
19. Patent 12,389,095 B2: wherein the connection wire includes a same material as a material of the metal wire constituting the bump part.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Applicant disclosed prior art Kim et al. (U.S. Patent Publication Number 2021/0021744 A1).
Regarding Claim 1, Kim discloses a camera module (Title – camera module and optical device) comprising:
a reinforcing plate (Fig 1-3 – stiffener 900 has been interpreted as “a reinforced plate”);
a bump part disposed on the reinforcing plate (Kim discloses this in Figs 4a and 4b where he discloses that the stiffener 900 may include a number of protrusions 901 and/or 902);
an image sensor (Figs 1-3, 10a - image sensor 810) disposed on the bump part (This is discloses in Fig 5 and in ¶0133-¶0147 where Kim discloses that the image sensor is disposed on the protruding portion 901 and/or 902); and
a circuit board (Fig 10a – substrate 800) disposed on the reinforcing plate (fig 10a – stiffener (reinforcing plate) 900-4) and including a cavity overlapping the bump part and the image sensor in a vertical direction (Kim discloses in Fig 10a – a cavity between the substrate and the image sensor portion; Kim in ¶0133-¶0147 where Kim discloses that the image sensor is disposed on the protruding portion 901 and/or 902 and it is also disposed in a cavity formed between circuit boards 800),
wherein the reinforcing plate (Fig 1-3 – stiffener 900) and the bump part (a number of protrusions 901 and/or 902) include different metal materials (In ¶0092, Kim discloses that the stiffener 900 may be formed of a metal material having high thermal conductivity; Kim also discloses that adhesive member may be disposed on the protruding portion 901 – see ¶0114 -. It could therefore be reasonably interpreted that the reinforcing plate and the bump part include different metal materials), and
wherein at least a portion of the circuit board (Fig 10a – substrate 800) overlaps the image sensor (Figs 1-3, 10a - image sensor 810) and the bump part in a horizontal direction (This is discloses in Fig 5 and in ¶0133-¶0147 where Kim discloses that the image sensor is disposed on the protruding portion 901 and/or 902).
Regarding Claim 2, Kim discloses wherein the bump part (number of protrusions 901 and/or 902) and the image sensor (Figs 1-3, 10a - image sensor 810) are disposed in the cavity of the circuit board (Kim discloses in Fig 10a – a cavity between the substrate and the image sensor portion; Kim in ¶0133-¶0147 where Kim discloses that the image sensor is disposed on the protruding portion 901 and/or 902 and it is also disposed in a cavity formed between circuit boards 800).
Regarding Claim 3, Kim discloses wherein the bump part (Fig 4A - number of protrusions 901 and/or 902) and the image sensor are spaced apart from an inner wall of the cavity of the circuit board in the horizontal direction (Kim discloses this in Fig 4A. 6, where he discloses the protrusions (901-1 to 901-n) are in region S1 and spaced apart from region S2. Fig 6 clearly discloses the space from the inner wall of the cavity.).
Regarding Claim 4, Kim discloses wherein a lower surface of the bump part (number of protrusions 901 and/or 902) is in direct contact with the reinforcing plate (Kim, in Figs 4A, 4B discloses this feature)
Regarding Claim 5, Kim discloses wherein an upper surface of the bump part (Fig 4A - number of protrusions 901 and/or 902) is in direct contact with the image sensor (Fig 5 discloses this where the image sensor 810 is on the protrusions 901)
Regarding Claim 6, Kim discloses comprising: a first adhesive member (Fig 10a – adhesive member 1750 has been interpreted as “a first adhesive”) disposed between (Fig 10 discloses this feature) the reinforcing plate (Fig 10a – stiffener 900) image sensor (Fig 10a – image sensor 810); and
wherein an upper surface of the first adhesive member is in direct contact with the image sensor (Fig 10a discloses this feature too).
Regarding Claim 7, Kim discloses wherein the image sensor (Fig 5 discloses this where the image sensor 810) overlaps the first adhesive member (¶0114; adhesive member 1750) and the bump part in the vertical direction (See Fig 5)), and wherein the first adhesive member is spaced apart from the bump part in the horizontal direction:
Regarding Claim 8, Kim discloses wherein the bump part (Fig 4A - number of protrusions 901 and/or 902) includes a plurality of bumps spaced apart and disposed along a circumferential direction of the first adhesive member (Kim: This is disclosed in Figs 4B and 5 where the protrusions 901 overlap the corner region of the lower surface of the image sensor 810).
Claim Rejections - 35 USC § 103
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.
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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Applicant disclosed prior art Kim et al. (U.S. Patent Publication Number 2021/0021744 A1) in view of Lin et al. (U. S. Patent Publication Number 2006/0006531 A1).
Regarding Claim 19, Kim fails to clearly disclose wherein the image sensor (image sensor 810) includes an active pixel region, a non-pixel region around the active pixel region, and a dummy pixel region between the active pixel region and the non-pixel region, and wherein at least a portion of the bump part overlaps the active pixel region in the vertical direction.
Instead in a similar endeavor, Okada discloses wherein the image sensor (Chip 120) includes an active pixel region, a non-pixel region around the active pixel region (active surface 122), and a dummy pixel region (In ¶0034, Lin teaches that the passivation layer 360 covers the peripheral region) between the active pixel region and the non-pixel region, and wherein at least a portion of the bump part overlaps the active pixel region in the vertical direction (Lin, in the abstract and throughout (see ¶0007) teaches that the chip has an active surface and the bonding pad 140, a bump 180 is disposed on the active surface 122).
Kim and Lin are combinable because both are related to solid state imaging device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the image sensor with the one that has an active region and a passive region in the periphery as taught by Lin in the imaging device disclosed by Kim since each element merely performs the same function and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Therefore, it would have been obvious to combine Kim and Lin to obtain the invention as specified in claim 19.
Conclusion
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/PADMA HALIYUR/Primary Examiner, Art Unit 2639 September 19, 2026
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