DETAILED ACTION
The response filed on October 22, 2025 is being acknowledged.
Election/Restrictions
Applicant's election of Species D encompassing claims 16, 18-22, and 24-27 in the reply filed on October 22, 2025 is acknowledged. Therefore, claims 28-31 and 33 are withdrawn as being drawn to non-elected subject matter.
Furthermore, applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Specification
The specification is objected for minor informalities:
Specification mentions that “Figure 4 shows a contact assembly 1 according to a third embodiment. This differs from the second embodiment shown in figure 3 in that the wiring substrate 2 has a plurality of wiring layers 16. In order to be able to dissipate heat particularly efficiently, metal-filled recesses 10 are arranged in each wiring layer 16, more specifically in such a way that the recesses are arranged stacked beneath the contact connection surfaces 8”.
See figure 4, it has only one contact connection surface 8 as well as all other figures, however, specification mentions same as the contact connection surfaces 8 for figure 4, therefore, it is not clear what is correct interpretation and appears to be misleading; majority of specification and all figure support the contact connection surface 8 connected one metal-filled recess; therefore, it should be properly corrected.
Additionally, specification fails to disclose how surface 8 connecting plurality of metal recesses. It appears that only one the contact connection surface 8 on upper face 4 connecting only one metal recess throughout all figures.
Therefore, specification is incomprehensive. One of the ordinary skill in the art not able to understand the subject matter in specification as well as in figures; no clear clarification and proof provided in the remarks.
Therefore, proper clarification is required.
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.
Claims 16, 18-22 and 24-27 are 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(s) 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 and the claims are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling.
Rejection of claim 16, the limitation “a layer provided on said upper face of said wiring substrate and disposed on said at least one metal-filled recess formed in said volume, said layer having at least one contact connection surface at an upper surface of said layer” and “an electrically insulating layer covering a side of said at least one metal-filled recess disposed opposite to said layer having said at least one contact connection surface” and “at least one bonding strip connected to said at least one contact connection surface” contains new matter or 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 and have enablement issue.
See elected figure 6, wherein only one metal-filled recess and only contact surface connected to one metal filled is provided. Furthermore, it is not clear what is contact surface 8 is, it appears that a layer and contact surface in claim based on specification defining same structure. Specification do not mentions conductive top layer as layer instead it mentions that “contact connection surface and clearly states that wiring substrate and has at least one contact connection surface, which is connected by means of at least one bonding strip to a contact connection surface of the wiring substrate”. Therefore, it is not clear how ordinary skill in the art to understand claim, how to consider a layer and a contact connection surface as same structure or two different parts because claim is not consistent with the specification.
And the limitation “a layer provided on said upper face of said wiring substrate and disposed on said at least one metal-filled recess formed in said volume, said layer having at least one contact connection surface at an upper surface of said layer” contains new matter based on figure 6 wherein layer or contact surface 8 is only one and connecting only one metal recesses; no plural layers or contact surfaces 8 are defined in figure 6 and mentioned how each would connected to each, plurality or all of the metal filled recess wherein only one metal filled recess is exists.
The limitation “an electrically insulating layer covering a side of said at least one metal-filled recess disposed opposite to said layer having said at least one contact connection surface” also contains new matter and enablement issue because if the top wiring layer 16 in figure is first wiring layer , it is not clear where is an insulating layer located. Again, it appears that first wiring layer and insulating layer defining same thing, but claimed as separate components. Therefore, it contains new matter.
The limitation “at least one bonding strip connected to said at least one contact connection surface” is contains new matter or enablement issue. Because it is not clarified in specification as well not mentioned properly in the specification or figure. None of figures show more than on contact surfaces 8 and how it is connected a metal recess. No clear proof is given in the specification.
Rejection of claims 18-20, 22, the limitation “wherein said at least one metal-filled recess” and “said metal-filled recesses (claim 20)” contains new matter or 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.
See elected figure 6 which includes one metal-filled recess in first wiring layer or upper face of wiring substrate; while other metal-filled recesses in other wiring layers are defined as further metal-filled recesses. Also, see rejection of claim 16.
Proper clarification is required.
Rejection of claims 21, the limitation “wherein said at least one metal-filled recess includes a plurality of interconnected, adjacently disposed[[,]] metal-filled recesses interconnect via at least one of said electrically conductive layers and disposed beneath said at least one contact connection surface in said volume of said wiring substrate” contains new matter or 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 as well as enablement issue.
Note that claim 16 clearly states at least one metal-filled recesses are on upper face and at least further metal-filled recesses are in each further wiring layers; Specification mentions that a metal-filled recess interconnected to adjacent one of at least further metal recesses via one of said electrically conductive layers, while at least one of further metal-filled recess interconnected to adjacent one at least further metal recesses via rest of said electrically conductive layers.
Therefore, claim 21 contains new matter.
Rejection of claim 18-22, and 24-27, claims 18-20, 24-27 are rejected by the same reason applied to the rejection of claim 16 above.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-22, 24-27 and 33 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Rejection of claim 16, the limitations “a layer provided on said upper face of said wiring substrate and disposed on said at least one metal-filled recess formed in said volume, said layer having at least one contact connection surface at an upper surface of said layer” and “an electrically insulating layer covering a side of said at least one metal-filled recess disposed opposite to said layer having said at least one contact connection surface” and “at least one bonding strip connected to said at least one contact connection surface” are indefinite for failing to particularly point out and distinctly claim the subject matter.
See elected figure 6, wherein only one metal-filled recess and only contact surface connected to one metal filled is provided. Furthermore, it is not clear what is contact surface 8 is, it appears that a layer and contact surface in claim based on specification defining same structure. Specification do not mentions conductive top layer as a layer instead it mentions that “contact connection surface and clearly states that wiring substrate and has at least one contact connection surface, which is connected by means of at least one bonding strip to a contact connection surface of the wiring substrate”. Therefore, it is not clear how ordinary skill in the art would ably understand the claim, how to consider a layer and a contact connection surface as same structure or two different parts because claim is not consistent with the specification. Therefore, claim 16 is unclear and has a major issue.
And the limitation “a layer provided on said upper face of said wiring substrate and disposed on said at least one metal-filled recess formed in said volume, said layer having at least one contact connection surface at an upper surface of said layer” is indefinite and unclear based on figure 6 wherein layer or contact surface 8 is only one and connecting only one metal recesses; no plural layers or contact surfaces 8 are defined in figure 6 and mentioned how each would connected to each, plurality or all of the metal filled recess wherein only one metal filled recess is exists.
The limitation “an electrically insulating layer covering a side of said at least one metal-filled recess disposed opposite to said layer having said at least one contact connection surface” also contains indefinite or clarity issue because if the top wiring layer 16 in figure is first wiring layer , it is not clear where is an insulating layer located. Again, it appears that first wiring layer and insulating layer defining same thing, but claimed as separate components. Therefore, it is unclear.
The limitation “at least one bonding strip connected to said at least one contact connection surface” is indefinite. Because it is not clarified in specification as well not mentioned properly in the specification or figure. None of figures show more than one contact surfaces 8, and failed to mentions how it is connected a metal recess. No clear proof is given in the specification.
Therefore, claim 16 is has major issue which can not understand clearly.
Proper clarification is required.
Rejection of claim 20, the term ”said metal-filled recesses” lacks antecedent basis. It is not clear that ”said metal-filled recesses” refresh to said at least one metal-filled recesses, said plurality of further metal filled recesses, or at least two further metal-filled recesses.
Proper Clarification is required.
Rejection of claims 21, the limitation “wherein said at least one metal-filled recess includes a plurality of interconnected, adjacently disposed metal-filled recesses interconnect via at least one of said electrically conductive layers and disposed beneath said at least one contact connection surface in said volume of said wiring substrate” 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.
Note that claim 16 clearly states at least metal-filled recesses are one that on upper face and at least further metal-filled recesses are in each further wiring layers; Specification appears to mention that a metal-filled recess interconnected to adjacent one of at least further metal recesses via one of said electrically conductive layers, while at least one of further metal-filled recess interconnected to adjacent one at least further metal recesses via rest of said electrically conductive layers.
Therefore, it is not clear how said at least one metal-filled recess includes a plurality of interconnected, adjacently disposed metal-filled recesses interconnect via at least one of said electrically conductive layers and disposed beneath said at least one contact connection surface in said volume of said wiring substrate
Therefore, claim 21 is indefinite and unclear.
Rejection of claims 25, the limitation “wherein said lower face of said wiring substrate is formed of an electrically insulating layer” 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.
Claim 1 mentions “an electrical insulating layer”, therefore, it lacks antecedent basis.
Rejection of claim 18-22, and 24-27, claims 18-20, 24-27 are rejected by the same reason applied to the rejection of claim 16 above.
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.
Note: It appears that claims subject matter is incomprehensive; note clearly mentioned so that understandable by ordinary skill in the art , therefore, rejection under USC 112 is sufficient for rejection purpose; however, rejection under USC 102 and 103 are given below to advance prosecution and as a courtesy, however, proper amendment and clarification is strongly required for rejection under USC 112 as mentioned above prior to consider rejection under USC 102 and/or 103.
Claims 16, 18-22 and 24-27 are rejected under 35 U.S.C. 102(a)(a)(2) (whichever apply) as anticipated by Young et al. (US5408053, hereinafter Young) or, in the alternative, under 35 U.S.C. 103 as obvious over Young et al. (US5408053, hereinafter Young) or Badet et al. (US4371744, hereinafter Badet) in view of Hashemi et al. (US6252178, hereinafter Hashemi).
Rejection of Claim 16, Young (figures 1-2) or Badet (figure 2, 6, 9) discloses a contact assembly for an electronic component,
the contact assembly comprising:
a wiring substrate including an upper face, a lower face and a volume having (see wiring substrate with metal-filled recess in the figures 1-2 in Young; or see wiring substrate with metal-filled recess in the figures of Badet ),
said wiring substrate having a first wiring layer and a plurality of further wiring layers each having an upper face (see a first wiring layer and a plurality of further wiring layers each having an upper face in the figures 1-2 of Young; or a first wiring layer and a plurality of further wiring layers each having an upper face in the figures of Badet ); and
said wiring substrate having a plurality of electrically conductive layers, and one of said plurality of electrically conductive layers respectively between each of said first wiring layer and further wiring layers, wherein one of said electrically conductive layers substantially covers said upper face of each further wiring layer (see two of electrically conductive layers in the figures 1-2; or see two of electrically conductive layers in the figures of Badet);
a layer provided on said upper face of said wiring substrate and disposed on said at least one metal-filled recess formed in said volume, said layer having ( this limitation can not properly interpreted based on US 112 and specification; therefore it is incomprehensive);
each of said further wiring layers having at least one of a plurality of further metal filled recesses, and each of said plurality of further metal filled recesses having a respective upper face being covered with a respective one of said plurality of electrically conductive layers (see two of electrically conductive layers having metal-filled recess connection provided the wiring layers in the figures 1-2);
an electrically insulating layer covering a side of said surface ( this limitation can not properly interpreted when considering the first wiring layer based on US 112, therefore it is incomprehensive; see two of electrically conductive layers having metal-filled recess connection provided the wiring layers in the figures of Badet);
said upper face of said wiring substrate being continuous and only interrupted by said (see figures 1-2 of Young; or see the figures of Badet); and
Badet further discloses at least one bonding strip connected to said (12 in figures or Badet).
Additionally or Alternatively, Young fails to disclose at least one bonding strip connected to said
Hashemi discloses a contact assembly (figure 2a) for an electronic component, the contact assembly comprising:
a wiring substrate (a wiring substrate 200-210) including an upper face (an upper face 245 of the wiring substrate), a lower face (a lower face of wiring substrate at 200) and a volume (a volume between the upper and the lower faces) having at least one metal-filled recess (at least one of plural 220 and/or 260 ) formed therein;
at least one bonding strip (280) connected to said at least one contact connection surface (280 connected to the contact connection surface, also mentions that Only one wire bond is shown in FIG. 2a, but there may be any number of wire bonds from semiconductor device chip 270 to a plurality of bond pads 240.).
It would have been obvious to ordinary skill in the art before the effective filing date of the claimed invention to modify the contact assembly of Young to have bonding strip as taught by Hashemi because In FIG. 2a, a fine wire 280 serves as an electrical connection between bond pads 240 and a suitable area on semiconductor device chip 270. Wire 280, Only one wire bond is shown in FIG. 2a, but there may be any number of wire bonds from semiconductor device chip 270 to a plurality of bond pads 240, additionally it is known and old that use of wire bonding for electrical connection between two components to transfer current, power, ground, or signal.
Rejection of Claim 18, Badet or Young in view of Hashemi disclose the contact assembly according to claim 16, wherein said (see the at least one metal filled via in the figure of Badet; or see figure 2a of Hashemi. Note that it is well known and old that least one metal- filled via having taper conical shape to adjust current capacity).
Rejection of Claim 19, , Badet or Young in view of Hashemi disclose the contact assembly according to claim 18, wherein said (see the at least one metal filled via in the figures of Badet; or see figure 2a of Hashemi. Note that it is well known and old that least one metal- filled via having taper conical shape to adjust current capacity).
Rejection of claim 20, Badet or Young in view of Hashemi disclose the contact assembly according to claim 16, further comprising:
at least two further metal-filled recesses; wherein said wring substrate is multilayered ;and one of said at least two further metal-filled recesses being arranged in each of said plurality of further wiring layers (see figures of Badet or Young in view of Hashemi), and
said metal-filled recesses being interconnected via respective said electrically conductive layers and disposed above one another beneath said ( It not sure said metal-filled recesses referred to what because first wiring layer has the said one metal filled recess and further wiring layer has either plurality of further metal filled recesses and at least two metal-filled recesses; therefore, not clearly understand by ordinary skill in the art, proper clarification is required under USC 112 above) .
Rejection of Claim 21, Badet or Young in view of Hashemi disclose the contact assembly according to claim 16, wherein said interconnect via at least one of said electrically conductive layers and disposed beneath said at least one contact connection surface in said volume of said wiring substrate ( It not sure said metal-filled recesses referred to what because first wiring layer has the said one metal filled recess and further wiring layer has either plurality of further metal filled recesses and at least two metal-filled recesses; therefore, not clearly understand said one metal-filled recess includes a plurality of interconnected, adjacently disposed metal-filled recesses interconnect via at least one of said electrically conductive layers by ordinary skill in the art, proper clarification is required under USC 112 above)
Rejection of Claim 22, Badet or Young in view of Hashemi disclose the contact assembly according to claim 16, wherein said at least one metal-filled recess has a metal filling including copper or consisting of copper ( specification mentions that 220 and/or 260 includes copper in Hashemi; additionally it is well known and old to use copper via for high conductivity).
Rejection of Claim 24, Badet or Young in view of Hashemi disclose the contact assembly according to claim 16, further disclose interconnection between said bonding strip and said at least one contact connection surface (see rejection of claim 16); but fail to disclose which further comprises a laser welded connection.
It would have been obvious to ordinary skill in the art before the effective filing date of the claimed invention to modify the contact assembly of Badet or Young in view of Hashemi to have welded connection interconnecting said bonding strip and said at least one contact connection surface because it is well known that welded connection is used between two adjacent metal structures to make permanent long lasting bonding or connection between them. Note that since “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Rejection of Claim 25, Badet or Young in view of Hashemi disclose the contact assembly according to claim 16, but fail to disclose wherein said lower face of said wiring substrate is formed of an electrically insulating layer (insulating layer 18 in figures of Badet; or 200 made of insulating layer which has lower surface as lower face of the wiring substrate in Hashemi, also C5 made of insulating layer as one of the insulator layers C1 to C5 in Hayashi in paragraph 0041; it also known and old that lower wiring layer is insulating layer in the circuit board to avoid short circuit between wiring or conductors between the two layers ) .
Rejection of Claim 26, Badet or Young in view of Hashemi disclose a semiconductor component, comprising: a contact assembly according to claim 16; and
at least one semiconductor part having at least one contact connection surface connected by said at least one bonding strip to said contact connection surface of said wiring substrate disposed on said upper face of said wiring (see bonding strip(s) as mentioned in the rejection of claim 16).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Badet, Young, Hashemi, and further in view of Raorane et al. (US20200075501, hereinafter Raorane).
Rejection of Claim 27, Badet or Young in view of Hashemi disclose the semiconductor component according to claim 26, but fail to disclose wherein said at least one semiconductor part is a power semiconductor part.
Raorane discloses wherein said at least one semiconductor part is a power semiconductor part (see paragraph 0005, 0007, 0029, and 0031).
It would have been obvious to ordinary skill in the art before the effective filing date of the claimed invention to modify the contact assembly of Badet or Young in view of Hashemi to have at least one semiconductor part is a power semiconductor part as taught by Raorane because this type of arrangement would provide to maintain signal integrity as well as to maintain power integrity.
Response to Arguments
Applicant’s arguments with respect to claim(s) 16, 18-22, 24-27, have been considered but are moot because the new ground of rejection under USC 112 or under USC 103 does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Responding to argument based under USC 112 and specification, as amended claims and no clear proof and lack clarity with regard to specification do not clarify the limitations under the rejection or modified rejection under USC 112 as mentioned above, see rejection under USC 112 and objection to specification above for clarification. Therefore, the rejection under USC 112 and objection to the specification are not withdrawn.
Therefore, applicants arguments are not persuasive.
Pertinent Prior Arts
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent art in the present case.
Communication
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/PARESH PAGHADAL/Primary Examiner, Art Unit 2847