UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/046,933
`
`02/18/2016
`
`JUNJI SATO
`
`731156.526
`
`3330
`
`Seed IP Law Group LLP/Panason1e
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`WINDRICH‘ MARCUS E
`
`ART UNIT
`
`3646
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`03/15/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/046,933
`Examiner
`MARCUS E WINDRICH
`
`Applicant(s)
`SATO et al.
`Art Unit
`3646
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 11—21—2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
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`1—14is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:l Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1)
`
`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
`
`Part of Paper No./Mai| Date 20190312
`
`

`

`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Response to Arguments
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`2.
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`Applicant's arguments filed 11-21-2018 have been fully considered.
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`With respect to applicant’s argument that the redistribution layer is not stacked
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`on the insulating layer in the disclosure of Beer, the examiner respectfully disagrees.
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`Beer discloses that the re-distribution layer is created on the insulation layer through
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`use of depositing a metal liner (1195) and the examiners submits that using a metal liner
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`to etch the redistribution layer on top of the insulating layer meets the claim limitation.
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`While Beer does not use the word “stack” it is clear that the redistribution layer
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`components are on top of the insulating layer and that the entire structure is then given
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`the name of re-distribution layer (item 61).
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`With respect to applicant’s argument that Beer does not disclose a first antenna
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`element over a silicon substrate the examiner respectfully disagrees. Beer teaches that
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`the chip resides on a silicon substrate (184) and that there is an antenna element within
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`the package as discussed in para. 104-117 where the antenna element(s) are in various
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`positions.
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`With respect to applicant’s argument that Beer fails to disclose one or more
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`second antenna elements the examiner respectfully disagrees. Beer discloses antenna
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`elements on different substrates within the package (1121-122) and refers to them as
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 3
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`“an antenna structure” and “a different antenna structure” which would correspond to
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`first and second antenna elements with different connections and vias.
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`With respect to applicant’s argument concerning the lack of a prim facie case of
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`obviousness, the examiner submits that there is no requirement that a motivation to
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`make the modification be expressly articulated. The test for combining references is
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`what the combination of disclosures taken as a whole would suggest to one of ordinary
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`skill in the art.
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`In re McLaughlin, 170 USPQ 209 (CCPA 1971). References are
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`evaluated by what they suggest to one versed in the art, rather than by their specific
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`disclosures.
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`In re Bozek, 163 USPO 545 (CCPA) 1969.
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`In this case, the disclosures of
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`Beer and Margomenos provide an antenna integrated module with a semiconductor
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`chip, insulating layer, re-distribution layer, conductor plate and frequency converters.
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`The applicant has provided no evidence or reasoning as to why the claimed invention is
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`new, novel or improves upon the existing prior art of Beer and Margomenos.
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`Examiner’s Note: For applicant’s benefit portions of the cited reference(s) have
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`been cited to aid in the review of the rejection(s). While every attempt has been made to
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`be thorough and consistent within the rejection it is noted that the PRIOR ART MUST
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`BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH
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`AWAY FROM THE CLAIMS. See MPEP 2141.02 VI.
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 4
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`Claim Rejections - 35 USC § 103
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`3.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
`
`5.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`6.
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`Claims 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Beer, et. al., U.S. Patent Application Publication Number 2014/0110841, published April
`
`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 5
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`24, 2014 in view of Margomenos, U.S. Patent Number 8,022,861, published September
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`20, 2011.
`
`As per claim 1, Beer discloses an antenna-integrated module comprising:
`
`one or more semiconductor chips each having a silicon substrate, a metal layer
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`stacked on a first surface of the silicon substrate (Beer, 1185-86 showing a chip on a
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`silicon substrate with a metal layer);
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`an insulating layer that surrounds the one or more semiconductor chips (Beer,
`
`1195);
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`a re-distribution layer that is stacked on a first surface of the insulating layer and
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`on a first surface of the metal layer (Beer, 1194-97);
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`one or more first antenna elements that are provided over the silicon substrate
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`on the first surface of the metal layer with a first conductor pattern (Beer, 1184 showing
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`the silicon substrate and 11104-117 showing various antenna element positions);
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`and one or more second antenna elements that are provided over the insulating
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`layer with a second conductor pattern on a first surface of the re-distribution layer
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`stacked on the first surface of the insulating layer (Beer, 11121-122 showing the second
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`antenna on another layer).
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`Beer does not expressly disclose the second antenna being on the same layer
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`but does disclose an antenna on the re-distribution layer (1152).
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`It would have been
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`obvious to a person of ordinary skill in the art at the time of the invention to place the
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 6
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`second antenna on the re-distribution layer as it has been held that rearranging parts of
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`an invention involves only routine skill in the art.
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`In re Japikse, 86 USPQ 70.
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`Beer is silent in regards to frequency converters within the module.
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`Margomenos teaches an antenna module with frequency converters (Col. 6, lines
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`17-30).
`
`It would have been obvious to a person of ordinary skill in the art at the time of
`
`the invention to have frequency converters in order to gain the benefit of including the
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`common components necessary to operate the device.
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`As per claim 2, Beer as modified by Margomenos discloses the antenna-
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`integrated module according to Claim 1, wherein at least one of (i) the one or more first
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`antenna elements and (ii) the one or more second antenna elements has a differential
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`configuration (Beer, Fig. 2, item 50 showing the dipoles in a differential configuration).
`
`As per claim 3, Beer as modified by Margomenos further discloses the antenna-
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`integrated module according to Claim 1, wherein the insulating layer is stacked on a first
`
`surface of a conductor plate (Beer, 1185 where the apparatus, including the insulating
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`layer is stacked on a metal plate).
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`As per claim 4, Beer as modified by Margomenos further discloses the antenna-
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`integrated module according to Claim 1, wherein the one or more first antenna elements
`
`and the one or more second antenna elements are configured such that the one or
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`more first antenna elements and the one or more second antenna elements radiate
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 7
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`toward a second surface of the re-distribution layer (Beer, Fig. 1A, item 50 showing the
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`antennas radiating in the direction of re-distribution layer, item 61).
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`As per claim 5, Beer as modified by Margomenos further discloses the antenna-
`
`integrated module according to Claim 1, wherein the one or more semiconductor chips
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`each have one or more phase adjusting circuits that are connected to the one or more
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`frequency converters (Margomenos, Col. 6, lines 17-30).
`
`It would have been obvious to a person of ordinary skill in the art at the time of
`
`the invention to have phase adjusting circuits in order to gain the benefit of including the
`
`common components necessary to operate the device.
`
`As per claim 6, Beer as modified by Margomenos further discloses the antenna-
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`integrated module according to Claim 1, wherein the one or more semiconductor chips
`
`each have one or more amplitude adjusting circuits that are connected to the one or
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`more frequency converters (Margomenos, Col. 6, lines 17-30).
`
`It would have been obvious to a person of ordinary skill in the art at the time of
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`the invention to have amplitude adjusting circuits in order to gain the benefit of including
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`the common components necessary to operate the device.
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`As per claim 7, Beer as modified by Margomenos further discloses the antenna-
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`integrated module according to Claim 1, wherein the semiconductor chips are disposed
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`separately from each other; and the one or more second antenna elements are
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`disposed between the semiconductor chips (Beer, Fig. 9, items 10A and 108).
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
`
`Page 8
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`It would have been obvious to a person of ordinary skill in the art at the time of
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`the invention to have the second antenna elements between the chips as it has been
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`held that rearranging parts of an invention involves only routine skill in the art.
`
`In re
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`Japikse, 86 USPQ 70.
`
`As per claims 8 and 13, Beer as modified by Margomenos further discloses a
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`radar device comprising:
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`an antenna-integrated module (Beer,1l8); and a second substrate on which the
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`antenna-integrated module is mounted (Beer, 11100 where the package is mounted to
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`another substrate).
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`As per the limitations of the antenna-integrated module, please see the rejection
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`and rationale of claim 1 above.
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`As per claim 9, Beer as modified by Margomenos further discloses the radar
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`device according to Claim 8, wherein the insulating layer is stacked on a first surface of
`
`a conductor plate; and the second substrate has a third conductor pattern in a portion of
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`the second substrate other than a portion facing the one or more first antenna elements
`
`and the one or more second antenna elements of the antenna-integrated module (Beer,
`
`11121-123 where multiple antennas and associated conductor patterns are disclosed).
`
`As per claim 10, Beer as modified by Margomenos further discloses the radar
`
`device according to Claim 8, wherein the second substrate has a forth conductor pattern
`
`that is located in a portion facing the first antenna element and the second antenna
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
`
`Page 9
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`element of the antenna-integrated module and the second substrate has a reflection
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`plate that is located between the antenna-integrated module and the conductor pattern
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`in a portion facing the first antenna element and the second antenna element (Beer,
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`11121-123 and 1147 disclosing the reflector).
`
`As per the limitations of claims 11 and 12, please see the rejection and rationale
`
`of claims 5 and 6 above.
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`As per claim 14, Beer as modified by Margomenos further discloses the antenna-
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`integrated module of claim 13 wherein the antenna integrated module is mounted on a
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`second substrate of a radar device (Beer 11100 mounting on a second substrate and 115
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`where radar use is suggested).
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`Conclusion
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`7.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure and is provided on form PTO-892.
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`8.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
`
`Page 10
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`9.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MARCUS E WINDRICH whose telephone number is
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`(571)272-6417. The examiner can normally be reached on M-F ~7-3:30.
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`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
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`supervisor, Jack Keith can be reached on 5712726878. The fax phone number for the
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`organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`

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`Application/Control Number: 15/046,933
`Art Unit: 3646
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`Page 11
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/MARCUS E WINDRICH/
`
`Primary Examiner, Art Unit 3646
`
`