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 .
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 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) 1-2, 4 and 5 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 heat from the external element or the circuit board connected to the first surface of the first ceramic substrate, wherein the heat insulating layer does not affect the electrical connection between the second surface of the first 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 (bottom surface) of a first substrate (3) and the thin film substrate (7) to isolate heat from the external element (20) or the circuit board connected to the first surface (top surface) of the first substrate (3), wherein the heat insulating layer (10) does not affect the electrical connection between the second surface (bottom 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 3/26/2026 have been fully considered but they are not persuasive.
Applicant argues regarding the rejection to claim 1, “Structurally, Hashimoto’s material is a multi-phase composite characterized by a non-crystalline, amorphous glass phase that surrounds discrete crystal grains. In stark contrast, a ceramic “formed by crystal growth” as claimed -specifically a sapphire structure- is a single-phase, monolithic lattice. By definition, a substrate formed by crystal growth lacks the glass matrix and the disordered grain boundaries that are inherent and mandatory in Hashimoto’s sintered body…While MPEP 2113 allows rejections if the product “reasonably appears to be identical,” Applicant contends they are not identical. A monolithic crystal formed by growth is structurally distinct from a composite of microcrystals in a glass matrix. Because the atomic-level continuity of the claimed substrate cannot be achieved by the sintering process of Hashimoto or Fujita, the claimed product is both new and non-obvious…The inherent physical divergence caused by the crystal lattice continuity-supported by the original disclosure-confirms that the claimed product is structurally novel and not identical to the prior art” [REMARKS page 2-4].
Examiner disagrees. 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 describes a crystal structure and is reasonably considered to meet the claimed feature a first ceramic substrate formed of a crystal structure. Regarding the claim language “formed by crystal growth” the rejection points out the product by process In re Thorpe case law to address the “growth” feature. The claims as currently presented do not further clarify this term. The Applicant points to “a sapphire structure- is a single-phase, monolithic lattice” and “monolithic crystal” to further clarify the difference between the instant application and the prior art. However these are not in the current claim language and cannot be implied within the term “growth”.
It is noted that the features upon which applicant relies (i.e., “a sapphire structure- is a single-phase, monolithic lattice” and “monolithic crystal”) are not recited in the rejected claim(s). 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).
Applicant further argues, “The entire structural integrity and manufacturing logic of Hashimoto depend on the presence of this glass phase to bind microcrystals together at relatively lower temperatures…Replacing Hashimoto’s sintered body with Zhao’s grown crystal would not be a “simple substitution”; it would require a complete redesign of Hashimoto’s multilayer board, as the high-temperature growth of a monolithic crystal would melt or destroy the “thin-film conductor section 3” and the “vertical via holes 11c” already integrated into Hashimoto’s structure…One cannot “modify” a powder-based sintered body (Fujita/Hashimoto) into a monolithic grown crystal (Applicant) without abandoning the very teachings of those references…there is no teaching in Hashimoto or Fujita that suggests their specific multilayer circuit applications require or could even survive the rigorous conditions of crystal growth. The Examiner is using the Applicant’s own disclosure as a roadmap to pick and choose features from the prior art, which constitutes impermissible hindsight” [REMARKS page 5-6].
Examiner disagrees. Zhao states, “most of LED substrates are now made from sapphire single crystal boules” [paragraph 0003]. It would appear reasonable that Hashimoto’s board can comprise that of the sapphire single crystal relating to a substrate as described by Zhao above. In the instant case the first ceramic substrate (fig. 1A, 1) of Hashimoto being formed prior to forming the conductor section 3 and the via holes 11c. After forming the first ceramic substrate (sapphire) by crystal growth as taught by Zhao then the vias and circuits can be incorporated.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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.
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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.
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/STEVEN T SAWYER/ Primary Examiner, Art Unit 2847
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