Attorney Docket Number: ALPH1034.USN/3519496.0040
Filing Date: 09/16/2022
Claimed Priority Dates: 10/20/2020 (371 of PCT/EP2020/025466)
10/23/2019 (PCT/EP2020/025466)
Inventors: Pandher et al.
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the amendment filed on 09/26/2025.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Amendment Status
The amendment filed on 09/26/2025 in reply to the previous Office action mailed on 06/26/2025 has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this Office action are claims 29-31 and 34-48.
Applicant’s amendments to the claims (e.g., newly specifying in claim 29 that the core material specifically comprises one or more of copper and silver and newly narrowing the previously claimed core layer thickness range of claim 29 such that Applicant alleges that the claimed range no longer “overlap[s] or lie[s] inside ranges disclosed by the prior art”) have necessitated the new grounds of rejections set forth below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the features canceled from the claims. No new matter should be entered.
an “IGBT, MOSFET, LED or microprocessor comprising the solder material of any of claim 29 or a solder joint comprising the solder material, or an interconnect comprising the solder material”, as recited in claim 42
“heating the solder material to form a soldered joint”, as recited in claim 44
“laminating the layers of solder on either side of the layer of core material”, as recited in claim 45
“wherein the layer of core material is in the form of a ribbon and/or the layer of solder is in the form of a ribbon”, as recited in claim 46
“ribbons… provided by casting, extrusion, or drawing”, as recited in claim 46
“layers… laminated in a co-drawing process, preferably a high-pressure co-drawing process”, as recited in claim 46
“diced and/or stamped” laminated layers, as recited in claim 46
“coating the core material with solder”, as recited in claim 47
cleaning “the surface of the layer of core material prior to it being coated with… solder”, as recited in claim 48
“contacting the core material with a molten solder bath”, as recited in claim 48
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claims Rejections
Initially, and with respect to claims 45-46 and 48, note that a “product by process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe,
even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
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 29-31, 34-41, and 43-48 are rejected under 35 U.S.C. 103 as obvious over Liu (US 2011/0220704).
Regarding claim 29, Liu (see, e.g., fig. 1 and par.0022/ll.19-23) shows a solder material 101 for use in electronic assembly, the solder material comprising:
solder layers 103 (e.g., Tin–Silver (SnAg) or Tin–Silver–Copper (SnAgCu)) (see, e.g., par.0027/ll.4-5); and
a core layer 102 comprising a core material (e.g., Ag or Ag–Nickel) (see, e.g., par.0028/ll.6)
wherein:
the core layer 102 is sandwiched between the solder layers 103; and
the thermal conductivity of the core material (e.g., Ag or Ag–Nickel) is greater than the thermal conductivity of the solder (e.g., SnAg or SnAgCu);
the thickness of the core layer is from 150 to 300 µm (see, e.g., pars.0023/ll.17-18 and 0026/ll.1-4);
the thickness of each solder layer is from 50 to 100 µm (see, e.g., par.0026/ll.1-4); and
the core material comprises one or more of copper and silver (e.g., Ag) (see, e.g., par.0028/ll.6)
In reference to the claim language pertaining to “thermal conductivities”, the claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. (In re Best, 195 USPQ 430, 433 (CCPA 1977) and In re Swinehart, 439 F. 2d 210, 169 USPQ 226 (CCPA 1971); please see MPEP § 2112). Since Liu shows all the features of the claimed invention, the characteristic "thermal conductivities" are an inherent property of Liu’s invention.
Furthermore, regarding claim 29, Liu (see, e.g., fig. 1 and pars.0023/ll.19-21 and 0026/ll.1-4) shows that the thickness of the core layer is from 150 to 300 µm and that the thickness of each solder layer is from 50 to 100 µm.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66. In the instant case, the claimed thickness range of the solder layers overlaps or lies inside the solder layer thicknesses disclosed by Liu (see, e.g., par.0026/ll.1-4), establishing a prima facie case of obviousness, wherein it is further noted that Liu does not limit Liu’s core and solder layer thicknesses to exclusively the exact numerals specifically identified in Liu’s written description (see, e.g., par.0029/ll.24-26, 0038, and 0042). Furthermore, in the instant case, Liu teaches that Liu’s core layer 102 may be between 2 and 10 times as thick as one of Liu’s solder layers 103 (see, e.g., par.0023/ll.17-18). Since Liu teaches that each of Liu’s solder layer may have a thickness of 50 µm (see, e.g., par.0026/ll.1-4), which overlaps or encompasses the solder layer range disclosed by the claim, Liu teaches that Liu’s core layer is from 150 to 300 µm (e.g., Liu’s core layer is between 3 and 6 times as thick as one of Liu’s 50 µm solder layers). Additionally, it is similarly noted that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not necessarily overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Moreover, even in a case that Liu does not explicitly specify that the thicknesses of the core layer and each solder layer is from 150 to 300 µm and from 50 to 100 µm, respectively, differences in thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such thicknesses are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Liu (see, e.g., pars.0023/ll.12-14 and 22-24) teaches that the post-isothermal-solidification structure and ductility of the core layer of Liu depend on the thickness of the core layer. Furthermore, Liu (see, e.g., pars.0025/ll.5-17 and 0026/ll.7-9) also teaches that the die-attach bonding strength and connective viability of Liu depend on the thickness of the solder layers. Accordingly, the specific claimed core and solder layer thicknesses, i.e., from 150 to 300 µm and from 50 to 100 µm, are result-effective variables and only considered to be the “optimum” thicknesses that a person having ordinary skill in the art would have been able to determine using routine experimentation based, among other things, on the desired ductility, bonding strength, connective viability, manufacturing costs, etc. (see Boesch, 205 USPQ 215 (CCPA 1980)), and since neither non-obvious nor unexpected results, i.e., results which are different in kind and not in degree from the results of the prior art, will be obtained as long as solder layers and a sandwiched core layer of a core material are used, as already suggested by Liu.
Since the applicant has not established the criticality (see next paragraph below) of the claimed core and solder layer thicknesses, i.e., from 150 µm to 300 µm and from 50 to 100 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Liu.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed thicknesses or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 30, Liu’s core material (e.g., Ag) has a thermal conductivity of greater than or equal to 65 W/m.K.
Regarding claim 31, Liu (see, e.g., pars.0002/ll.17-18 and 0028/ll.1-5) shows that the melting point of the core material (e.g., Ag) is greater than the reflow temperature of the solder (e.g., SnAgCu).
Regarding claim 34, Liu (see, e.g., par.0028/ll.6-8) shows that the core material (e.g., Ag) comprises a metal and/or an alloy.
Regarding claim 35, Liu (see, e.g., par.0028/ll.6-8) shows that the core material further comprises one or more of: nickel, molybdenum, beryllium, cobalt, iron, copper-tungsten alloy, nickel-silver alloy, copper-zinc alloy, and copper-nickel-zinc alloy (e.g., nickel).
Regarding claim 36, Liu (see, e.g., pars.0004/ll.1-3 and 0027/ll.4-5) show that the solder (e.g., SnAgCu) is lead-free.
Regarding claim 37, Liu (see, e.g., par.0027/ll.4-5) shows that the solder (e.g., SnAgCu) comprises SnCuAg alloy.
Regarding claim 38, Liu (see, e.g., fig. 1 and par.0022/ll.1-2) shows that the solder material 101 is in the form of a preform.
Regarding claim 39, although Liu (see paragraphs 10-17 above) shows a solder material substantially identical to the claimed structure, Liu is silent with respect to the effective thermal conductivity of the solder material. However, the specific claim limitation that the effective thermal conductivity of the solder material is greater than 65 W/m.K. is a property of the solder material of Liu’s device.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the instant case, Liu teaches the same core and solder layers respectively comprising Ag and SnAgCu as recited in the claims and/or instant application, therefore, the solder material will have an effective thermal conductivity of greater than 65 W/m.K.
Furthermore, differences in effective thermal conductivity will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Since the applicant has not established the criticality (see paragraph 17 above) of the claimed effective thermal conductivity, i.e., greater than 65 W/m.K., it would have been obvious to one of ordinary skill in the art to use this value in the device of Liu. See also the comments stated above in paragraphs 10-17 with respect to claim 29 regarding criticality, which are considered to be repeated here.
Regarding claim 40, Liu (see, e.g., fig. 2) shows a solder joint 200 comprising the solder material 101.
Regarding claim 41, Liu (see, e.g., fig. 6A and pars.0036/ll.1-2 and ll.12) shows an interconnect comprising the solder material 101.
Regarding claim 43, Liu (see, e.g., fig. 6A and par.0036) shows the use of the solder material 101 in a die attach soldering soldering method.
Regarding claim 44, Liu (see, e.g., fig. 6A and par.0031/ll.8-9) shows a method for forming a solder joint comprising providing the solder material 101 in the vicinity of two or more work pieces 402, 401 to be joined, and heating the solder material to form a soldered joint, wherein the two or more work pieces to be joined comprise a die 402 and a substrate 401.
Regarding claim 45, Liu (see, e.g., fig. 1 and par.0022) shows a method of manufacturing the solder material 101, comprising:
providing two or more layers of solder 103; and
providing a layer 102 of core material (e.g., Ag)
Accordingly, it is noted that Liu shows all structural aspects of the semiconductor device according to the claimed invention (see paragraphs 10-17 above), and that the method steps of laminating the layers of solder on either side of the layer of core material are intermediate steps that do not affect the structure of the final device.
Regarding claim 46, Liu (see, e.g., fig. 6A and par.0030/ll.5-6) shows that the layer 102 of core material (e.g., Ag) is in the form of a ribbon. Accordingly, it is noted that Liu shows all structural aspects of the semiconductor device according to the claimed invention (see paragraphs 10-17 above), and that the method steps of providing the ribbons by casting, extrusion, or drawing, laminating the layers in a co-drawing process or high-pressure co-drawing process, or stamping and/or dicing the laminated layers are intermediate steps that do not affect the structure of the final device.
Regarding claim 47, Liu (see, e.g., fig. 1 and par.0022) shows a method of manufacturing the solder material 101, wherein the method comprises:
providing a layer 102 of core material (e.g., Ag); and
coating the core material with solder (e.g., SnAgCu)
Regarding claim 48, it is noted that Liu shows all structural aspects of the semiconductor device according to the claimed invention (see paragraphs 10-17 above), and that the method steps of cleaning the surface layer of the core material prior to the core material being coated with solder or contacting the core material with a molten solder bath to coat the core material with solder are intermediate steps that do not affect the structure of the final device.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Yamaguchi (US 2013/0256390).
Regarding claim 42, Liu shows most aspects of the instant invention (see paragraphs 10-17 above), and further asserts that the device of Liu can be applied to various other implementations while maintaining the functionality of the device (see, e.g., par.0039). Liu, however, is silent with respect to having an IGBT, MOSFET, LED, or microprocessor comprising either Liu’s solder material, a solder joint comprising Liu’s solder material, or an interconnect comprising Liu’s solder material. Yamaguchi, having a similar solder material to Liu, teaches that solder material can be used in a variety of structures, including in MOSFETS, where such solder material can protect the circuits of lithium ion batteries (see, e.g., Yamaguchi: fig. 4 and par.0115/ll.6-9).
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to having Liu’s solder material in a MOSFET structure, as taught by Yamaguchi, so as to expand the external applications of Liu’s device.
Response to Arguments
With regards to the drawings, Applicant argues:
Applicants respectfully submit that it is not necessary, or practical, for the drawings to show every feature of the claimed solder material or methods. Under 35 U.S.C. 113, drawings are required only “where necessary for the understanding of the subject matter sought to be patented”. Therefore, it is not necessary for the drawings in the instant applicant to illustrate every feature objected to under 37 C.F.R. 1.83(a) as set forth in the previous Office action mailed on 06/26/2025.
The Examiner responds:
Applicant’s arguments are not found persuasive. Applicant’s interpretation of 35 U.S.C. 113 fails to account for the explicit regulatory requirements set forth in 37 C.F.R. 1.83(a). While 35 U.S.C. 113 provides that drawings are required “where necessary for understanding the subject matter to be patented”, the claims themselves necessarily define the subject matter sought to be patented. Applicant’s assertion that certain claimed aspects are thereby “not necessary for the understanding of the subject matter to be patented” is unpersuasive. Once a feature is positively recited in the claims, that feature is, by definition, part of the subject matter sought to be patented and falls squarely within the requirements of 37 C.F.R. 1.83(a), which governs the content of drawings once drawings are present. The statute unambiguously states the “the drawing in a nonprovisional application must show every feature of the invention specified in the claims”. Because the claims distinctly define the sought-to-be-patented invention, and because 37 C.F.R. 1.83(a) explicitly states that every feature of the claims must be shown in the drawings, the drawings must correspond to and explicitly illustrate the claimed subject matter. Accordingly, all features recited in the claims must be illustrated in the drawings.
Furthermore, whether the text of an application defines the claims is irrelevant to and not a substitute for compliance with 37 C.F.R. 1.83(a). Compliance with the written description requirement does not excuse non-compliance with the separate and independent drawings requirements imposed by 37 C.F.R. 1.83(a). The regulation contains no exception permitting omission of claimed features from the drawings merely because those features are described in the specification. 37 C.F.R. 1.83(a) unambiguously states that every feature of the invention specified in the claims must be shown in the drawings. Applicant’s instant application fails to comply with the statute. Accordingly, Applicant’s arguments with regards to the drawings are found unpersuasive and the objections to the drawings put forth in the previous Office action mailed on 06/26/2025 are maintained.
With respect to the claims, Applicant argues:
In view of the fact that former claims 32 and 33 were not rejected under 35 U.S.C. §102(a)(1) in view of Liu on pages 5-7 of the present Office action, Applicants respectfully submit that independent claim 29 as amended is also novel over the disclosure of Liu.
The Examiner responds:
The Examiner agrees that former claims 32 and 33 were not rejected under 35 U.S.C. 102(a)(1) in view of Liu on pages 5-7 of the previous Office action mailed on 06/26/2025. Former claims 32 and 33 were instead rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Liu on pages 7-9 of the previous Office action. Applicant’s implication that the absence of discussion regarding claims 32 and 33 on pages 5-7 of the previous Office action indicates that claims 32 and 33 were considered novel over Liu is incorrect. The previous Office action clearly rejected claims 32 and 33 based on Liu on pages 7-9. Accordingly, Applicant’s assertion that newly amended claim 29 is “also” novel is based on an incorrect premise and is found unpersuasive, as the Examiner never previously suggested or indicated that former claims 32 and 33 were novel at all.
With respect to the claims, Applicant argues:
The burden is not upon Applicants to show the criticality [of] the core layer thickness. Nevertheless, Applicants respectfully submit the inventors have discovered that the particularly claimed solder material uniquely solves the problem of stress caused by CTE mismatch of connected components. Importantly, this is achieved while providing adequate adhesion between components and without unduly increasing the size of the electronic device, and therefore reducing the risk of lateral stresses. Liu does not consider or provide any direction as to the problem of stress caused by CTE mismatch of components. There is also no suggestion in Liu to, at the same time, control the thickness of each solder layer (i.e., to a thickness of from 50 to 100 µm) in order to provide adequate adhesion between components without significantly decreasing the overall thermal conductivity of the solder material.
The Examiner responds:
With regards to the thicknesses of the claimed core and solder layers, see the comments in paragraphs 10-17 above. In response to Applicant’s argument regarding alleged improvements by the claimed invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, with regards to the statement of criticality, to be of probative value, the statement must be supported by actual proof. An improved operation of the resultant device is not actual proof. The MPEP gives guidelines on how to demonstrate the criticality of a claimed range. See MPEP § 716.02(d). As explained in the MPEP, the inventors should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form or proportions, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. See In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929). Accordingly, Applicant bears the burden to establish and prove the criticality of the claimed ranges of thicknesses. The inventors, however, have failed to present any such data showing that the claimed ranges of thicknesses are critical. Due to the absence of said data, the Examiner concludes that the inventors’ assertions that the claimed thicknesses are critical constitutes mere argument.
Applicant’s other arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant’s amendment necessitated the new grounds of rejection presented in 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 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire three months from the mailing date of this action. In the event a first reply is filed within two months of the mailing date of this final action and the advisory action is not mailed until after the end of the three-month shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than six months from the mailing date of this final action.
Papers related to this application may be submitted directly to Art Unit 2814 by facsimile transmission. Papers should be faxed to Art Unit 2814 via the Art Unit 2814 Fax Center. The faxing of such papers must conform to the notice published in the Official Gazette, 1096 OG 30 (15 November 1989). The Art Unit 2814 Fax Center number is (571) 273-8300. The Art Unit 2814 Fax Center is to be used only for papers related to Art Unit 2814 applications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shamita Hanumasagar at (703) 756-1521 and between the hours of 7:00 AM to 5:00 PM (Eastern Standard Time) Monday through Thursday or by e-mail via Shamita.Hanumasagar@uspto.gov. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Wael Fahmy, can be reached on (571) 272-1705.
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/Shamita S. Hanumasagar/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814