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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/1/2025 has been entered.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashimoto (US PG. Pub. 2011/0024167).
Regarding claim 1 – Hashimoto teaches a composite structure (fig. 1A & 3) of a ceramic substrate ([paragraph 0022] Hashimoto states, “The first multilayer circuit board 101 comprises a first ceramic substrate 1, a second ceramic substrate 2, and a thin-film conductor section 3”), comprising: a first ceramic substrate (1) formed by crystal ([paragraph 0031] Hashimoto states, “first ceramic substrate 1 may comprise…a microcrystalline sintered body of either crystallized glass in which crystal components have been deposited in a glass matrix”), having a first surface (bottom surface) and a second surface (top surface) opposite to each other, wherein the first ceramic substrate (1) comprises a plurality of vertical via holes (11c [paragraph 0033] Hashimoto states, “through-conductors 11c”) filled with a conductive material ([paragraph 0034] Hashimoto states, “the first through-conductors 11c may comprise metal materials”) so that the first surface and the second surface of the first ceramic substrate (1) are electrically connected (top and bottom pads 11a and 11b are connected through vertical via holes 11c); and a thin film substrate (3 [paragraph 0022] Hashimoto states, “thin-film multilayer conductor section 3”) disposed on the second surface (top surface) of the first ceramic substrate (1), having one surface electrically connected (see pads 11b connected to vias 4c and pads 4b of the thin film substrate 3) to the second surface (top surface) of the first ceramic substrate (1) and a plurality of electrical connection points (top pads 4b on upper surface of thin film substrate 3 [paragraph 0025] Hashimoto states, “pads 4b”) disposed on the other surface of the thin film substrate (3) to electrically connect an external element (connected to pads of external element 2 as shown in figure 1A) or a circuit board.
The examiner notes that applicant is claiming the product (composite structure of a ceramic substrate) including the process of making the product (“formed by crystal growth”), and therefore claim 1 is of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of a product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thorpe, 777 F. 2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985); and that patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by- process claim, a rejection based alternatively on either on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the statute is eminently fair and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685 and 688 (CCPA 1972). See MPEP §2113.
Regarding claim 2 – Hashimoto teaches the composite structure of the ceramic substrate of claim 1, wherein the first ceramic substrate (fig. 1A, 1) comprises aluminum oxide ([paragraph 0032] Hashimoto states, “the first ceramic substrate 1 comprises an aluminum oxide”) or aluminum nitride.
Regarding claim 4 – Hashimoto teaches the composite structure of the ceramic substrate of claim 1, further comprising: a second ceramic substrate (fig. 1A & 3, 2 [paragraph 0023] Hashimoto states, “ceramic substrate 2”) disposed on a surface of the thin film substrate (3) away from the first ceramic substrate (1), wherein the second ceramic substrate (2) comprises a third surface (lower surface) and a fourth surface (upper surface) opposite to each other, and the second ceramic substrate (2) comprises a plurality of vertical via holes (12c [paragraph 0025] Hashimoto states, “through-conductors 12c”) filled with a conductive material (see conductive material of 12c) so that the third surface (bottom surface) and the fourth surface (top surface) of the second ceramic substrate (2) are electrically connected, and the third surface (bottom surface) of the second ceramic substrate (2) is electrically connection to the other surface (top surface) of the thin film substrate (3); and a plurality of electrical connection points (12a [paragraph 0037] Hashimoto states, “connection pads 12a of the second ceramic substate 2”) disposed on the fourth surface (top surface of second ceramic substrate 2) of the second ceramic substrate (2) to electrically connect an external element or a circuit board (102 [paragraph 0050] Hashimoto states, “multilayer circuit board 102”).
Regarding claim 5 – Hashimoto teaches the composite structure of the ceramic substrate of claim 4, wherein the second ceramic substrate (figs. 1A & 3, 2 [paragraph 0042] Hashimoto states, “The second ceramic substrate 2 can be produced with a similar method using similar materials as the first ceramic substrate 1”) comprises aluminum oxide ([paragraph 0032] Hashimoto states, “the first ceramic substrate 1 comprises an aluminum oxide”) or aluminum nitride.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujita et al. (US Patent 5396034).
Regarding claim 1 – Fujita teaches a composite structure (fig. 2 & 3 [title] Fujita states, “thin film ceramic multilayer wiring hybrid board”) of a ceramic substrate, comprising: a first ceramic substrate (1 [column 4 line 14] Fujita states, “a ceramic multi-layer board 1”), having a first surface (bottom surface) and a second surface (top surface) opposite to each other, wherein the first ceramic substrate (1) comprises a plurality of vertical via holes (2 [column 4 line 60] Fujita states, “tungsten through-holes 2”) filled with a conductive material (tungsten as quoted above) so that the first surface and the second surface of the first ceramic substrate (1) are electrically connected (claimed structure shown in figure 2); and a thin film substrate (10 [column 6 line 13] Fujita states, “a thin film interconnection layer 10”) disposed on the second surface (top surface) of the first ceramic substrate (1), having one surface (bottom surface) electrically connected (through upper pads of first ceramic substrate 1) to the second surface (top surface) of the first ceramic substrate (1) and a plurality of electrical connection points (see connection points connected to solder balls 12) disposed on the other surface (top surface) of the thin film substrate (10) to electrically connect an external element (11 and 12) or a circuit board.
The examiner notes that applicant is claiming the product (composite structure of a ceramic substrate) including the process of making the product (“formed by crystal growth”), and therefore claim 1 is of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of a product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thorpe, 777 F. 2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985); and that patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by- process claim, a rejection based alternatively on either on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the statute is eminently fair and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685 and 688 (CCPA 1972). See MPEP §2113.
Regarding claim 3 – Fujita teaches the composite structure of the ceramic substrate of claim 1, further comprising a heat insulating layer (figs. 2&3, 8 [column 8 lines 22-23] Fujita states, “formed the glass layer 8 by heat-treating the ZnO-B.sub.2 O.sub.3 -SiO.sub.2 crystallizable glass powder at 750.degree. C.”; this glass layer is considered a “heat insulating layer” & thermal insulator and appears consistent with that of the instant application) disposed between the second surface (top surface) of the first ceramic substrate (1) and the thin film substrate (10) to isolate heat from the external element (11 & 12) or the circuit board connected to the first surface of the first ceramic substrate (1), wherein the heat insulating layer does not affect the electrical connection between the second surface of the first ceramic substrate (1) and the thin film substrate (10; claimed structure shown in figures 2-3 will have the claimed functionality and will act in a similar manner).
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto (US PG. Pub. 2011/0024167) in view of Zhao et al. (US PG. Pub. 2015/0203361).
Regarding claim 1 – Hashimoto teaches a composite structure (fig. 1A & 3) of a ceramic substrate ([paragraph 0022] Hashimoto states, “The first multilayer circuit board 101 comprises a first ceramic substrate 1, a second ceramic substrate 2, and a thin-film conductor section 3”), comprising: a first ceramic substrate (1) formed by crystal ([paragraph 0031] Hashimoto states, “first ceramic substrate 1 may comprise…a microcrystalline sintered body of either crystallized glass in which crystal components have been deposited in a glass matrix”), having a first surface (bottom surface) and a second surface (top surface) opposite to each other, wherein the first ceramic substrate (1) comprises a plurality of vertical via holes (11c [paragraph 0033] Hashimoto states, “through-conductors 11c”) filled with a conductive material ([paragraph 0034] Hashimoto states, “the first through-conductors 11c may comprise metal materials”) so that the first surface and the second surface of the first ceramic substrate (1) are electrically connected (top and bottom pads 11a and 11b are connected through vertical via holes 11c); and a thin film substrate (3 [paragraph 0022] Hashimoto states, “thin-film multilayer conductor section 3”) disposed on the second surface (top surface) of the first ceramic substrate (1), having one surface electrically connected (see pads 11b connected to vias 4c and pads 4b of the thin film substrate 3) to the second surface (top surface) of the first ceramic substrate (1) and a plurality of electrical connection points (top pads 4b on upper surface of thin film substrate 3 [paragraph 0025] Hashimoto states, “pads 4b”) disposed on the other surface of the thin film substrate (3) to electrically connect an external element (connected to pads of external element 2 as shown in figure 1A) or a circuit board.
Hashimoto fails to explicitly teach a ceramic formed by crystal growth.
Zhao teaches a ceramic ([title] Zhao states, “methods and processes of preparing aluminum oxide”) formed by crystal growth ([paragraph 0017] Zhao states, “The method of the present invention is especially useful for making high purity aluminum oxide suitable for efficient and high quality sapphire crystal growth”).
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to modify the first ceramic substrate as taught by Hashimoto with the ceramic being formed by crystal growth as taught by Zhao because this high quality sapphire crystal growth allows for superior hardness, extreme temperature stability, and excellent electrical insulating properties.
The examiner notes that applicant is claiming the product (composite structure of a ceramic substrate) including the process of making the product (“formed by crystal growth”), and therefore claim 1 is of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of a product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thorpe, 777 F. 2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985); and that patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by- process claim, a rejection based alternatively on either on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the statute is eminently fair and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685 and 688 (CCPA 1972). See MPEP §2113.
Regarding claim 2 – Hashimoto in view of Zhao teach the composite structure of the ceramic substrate of claim 1, wherein the first ceramic substrate (Hashimoto; fig. 1A, 1) comprises aluminum oxide ([paragraph 0032] Hashimoto states, “the first ceramic substrate 1 comprises an aluminum oxide”) or aluminum nitride.
Regarding claim 4 – Hashimoto in view of Zhao teach the composite structure of the ceramic substrate of claim 1, further comprising: a second ceramic substrate (Hashimoto; fig. 1A & 3, 2 [paragraph 0023] Hashimoto states, “ceramic substrate 2”) disposed on a surface of the thin film substrate (3) away from the first ceramic substrate (1), wherein the second ceramic substrate (2) comprises a third surface (lower surface) and a fourth surface (upper surface) opposite to each other, and the second ceramic substrate (2) comprises a plurality of vertical via holes (12c [paragraph 0025] Hashimoto states, “through-conductors 12c”) filled with a conductive material (see conductive material of 12c) so that the third surface (bottom surface) and the fourth surface (top surface) of the second ceramic substrate (2) are electrically connected, and the third surface (bottom surface) of the second ceramic substrate (2) is electrically connection to the other surface (top surface) of the thin film substrate (3); and a plurality of electrical connection points (12a [paragraph 0037] Hashimoto states, “connection pads 12a of the second ceramic substate 2”) disposed on the fourth surface (top surface of second ceramic substrate 2) of the second ceramic substrate (2) to electrically connect an external element or a circuit board (102 [paragraph 0050] Hashimoto states, “multilayer circuit board 102”).
Regarding claim 5 – Hashimoto in view of Zhao teach the composite structure of the ceramic substrate of claim 4, wherein the second ceramic substrate (Hashimoto; figs. 1A & 3, 2 [paragraph 0042] Hashimoto states, “The second ceramic substrate 2 can be produced with a similar method using similar materials as the first ceramic substrate 1”) comprises aluminum oxide ([paragraph 0032] Hashimoto states, “the first ceramic substrate 1 comprises an aluminum oxide”) or aluminum nitride.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto in view of Zhao et al. as applied to claim 1 above, and further in view of Tomura et al. (US PG. Pub. 2011/0279996).
Regarding claim 3 – Hashimoto in view of Zhao teach the composite structure of the ceramic substrate of claim 1, but fails to teach further comprising a heat insulating layer disposed between the second surface of the first ceramic substrate and the thin film substrate to isolate heats from the external element or the circuit board connected to second the surface of the first ceramic substrate from the ceramic substrate, wherein the heat insulating layer does not affect the electrical connection between the second surface of the ceramic substrate and the thin film substrate.
Tomura teaches a heat insulating layer (fig. 1, 10 [paragraph 0051] Tomura states, “heat-insulating layer 10”) disposed between the second surface (top surface) of a first substrate (3) and the thin film substrate (7) to isolate heats from the external element (20) or the circuit board connected to second the surface (top surface) of the first substrate (3) from the first substrate (3), wherein the heat insulating layer does not affect the electrical connection between the second surface (top surface) of the first substrate (3) and the thin film substrate (7; claimed structure shown in figure 1).
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to modify the composite structure of a ceramic substrate having a first ceramic substrate connected to a thin film substrate as taught by Hashimoto in view of Zhao with the inclusion of a heat insulating layer between two substrates as taught by Tomura because Tomura states, “The heat-insulating layer 10 has a lower thermal conductivity than the core board 1, the second insulating layer 3, and the third insulating layer 4. Therefore, heat conducted from the semiconductor device SD to the multilayer wiring board MB1 is prevented by the heat-insulating layer 10 from further being conducted to the core board 1 and the insulating layer 4, so that the multilayer wiring board MS1 can be inhibited from being warped when flip-chip bonding the semiconductor device SD to the multilayer wiring board MB1” [paragraph 0056].
Response to Arguments
Applicant's arguments filed 12/1/2025 have been fully considered but they are not persuasive.
Applicant argues regarding the rejection to claim 1, “(1) the ceramic substrate in the cited reference 3 (Hashimoto) is a product of machinable ceramic…(2) What is used by the ceramic multi-layer board 1 of the cited reference 4 (Fujita) is HTCC (High Temperature Co-Fired Ceramic…(3) A first ceramic substrate formed by crystal growth” in claim 1 of the subject application, by taking alumina as an example, is an alumina material formed by crystal growth, that is, sapphire…(6) As can be seen, the ceramic substrates of the cited reference 3 and the cited reference 4 is very different from “the first ceramic substrate formed by crystal growth” of the present invention, in terms of both the manufacturing process and the final product. Therefore, they are indeed completely different from each other especially in terms of optical transparency, heat conduction, processibility and other properties” [REMARKS page 2, 4, 5 & 8].
Examiner disagrees. Applicant appears to be arguing features that are not found in the claim. Applicant points out the instant application uses an alumina formed by crystal growth that forms sapphire. However the instant claim language merely states, “a first ceramic substrate” as the structural feature followed by the process step “formed by crystal growth”. Additionally the different properties “optical transparency, heat conduction, processibility” that are argued to be present by the “formed by crystal growth” method are not discussed in the specification as originally filed and do not appear to have sufficient support and therefore cannot be relied upon to differentiate the instant claim from the prior art.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As pointed out in the Final rejection dated 6/2/2025, Hashimoto states in paragraph 0031 “first ceramic substrate 1 may comprise…a microcrystalline sintered body of either crystallized glass in which crystal components have been deposited in a glass matrix”. Hashimoto does describe a crystal structure that is relevant to the instant claim language that states “a first ceramic substrate formed by crystal growth”. Specifically the crystal structure meets the structural requirement.
Additionally regarding Fujita, Fujita states that the first ceramic substrate 1 is formed of “alumina powder” [column 4 line 16]. The definition of alumina is stated as, “synthetically produced aluminum oxide, a white or near colourless crystalline substance” [Britannica]. Fujita can also be reasonably considered to have crystal structure. Additionally the method step “formed by crystal growth” found within the device claim does not in and of itself appear to provide a structural difference between Fujita/Hashimoto and the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN T SAWYER whose telephone number is (571)270-5469. The examiner can normally be reached M-F 8:30 am - 5pm.
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 supervisor, Timothy Thompson can be reached at 5712722342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN T SAWYER/ Primary Examiner, Art Unit 2847