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 § 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 1, 3 and 5-12 are rejected under35 U.S.C. 103 as being unpatentable over JP 2011-124585 Imamura et al in view of WO 2020/045388 Terasaki (cited by US 2021/0178509 Terasaki).
Regarding claim 1, Imamura teaches a copper/ceramic bonded body formed by bonding a copper member, which is formed of copper or a copper alloy, and a ceramic member (paragraph 0002),
wherein a ratio D1/D0 is 0.12 to 0.50 (paragraph 0029), D0 being an average crystal grain size of the entire copper member, D1 being an average crystal grain size of the copper member at a position 50 microns from a bonding surface with the ceramic member,
D0 and D1 being obtained by observing a cross-section of the copper member along a laminating direction (paragraph 0029, discussing grain diameter).
Imamura does not teach using Mg but does teach bonding by active metal brazing (paragraph 0003). Terasaki teaches a copper/ceramic bonded body including a magnesium brazing material where Mg is diffused in a region in the copper member (paragraph 0026 teaching the solid solution, where the “copper member” is both the copper and the solid solution layer), the region being at least 50 microns from the bonding surface with the ceramic member in the laminating direction (paragraph 0064 teaching that the solid solution layer is 0.1 to 150 microns thick such that the 50 microns position would reside within the Mg solid solution layer), and
Mg concentration decreases with increasing a distance from the bonding surface (paragraphs 0062-0067 teaching a layered structure starting with MgO at the ceramic face, followed by Mg3N2 needles, then Cu2Mg or CuMg2 in the solid solution layer and lastly Cu in the copper member), and
a concentration of Mg in the region is 0.19 wt% to 2 wt% (paragraph 0067 teaching that the intermetallic compound is Cu2Mg or CuMg2, paragraph 0018 teaching that the solid solution has a Cu primary phase, and paragraph 0064 teaching that the amount of Mg in the solid solution layer is 0.01 at% to 3 at%, which translates to 0.19 wt% to 2 wt%).
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.1 to 150 microns thick reads on the claimed range of at least 50 microns away.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the Mg brazing material of Terasaki in the product of Imamura because this suppresses breakage of the product during operation (paragraph 0041).
Regarding claim 3, Imamura teaches most of the limitations with respect to claim 1 above. Imamura further teaches forming an insulated circuit substrate (paragraph 0002).
Regarding claims 5 and 9, Imamura teaches that the ratio D1/D0 is 0.12 to 0.50 (paragraph 0029). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.12 to 0.50 reads on the claimed range of 0.25 to 0.56.
Regarding claims 6 and 10, Imamura teaches that a thickness of the copper member is 0.4 to 3.0 mm (paragraph 0038), and
the thickness of the ceramic member is 0.32 mm (paragraph 0038).
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.4 to 3.0 mm reads on the claimed range of 0.1 to 2.0 mm.
Regarding claims 7 and 11, Terasaki teaches that a Mg diffusion distance is 0.1 to 150 microns, the Mg diffusion distance being a distance from the bonding surface to a location where the concentration of Mg was 0.1 wt% (paragraph 0064, where the end of the solid solution layer would have a concentration of 0 wt%, such that some point within the layer would have the claimed 0.1 wt%). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.1 to 150 microns thick reads on the claimed range of 50 to 98 microns.
Regarding claims 8 and 12, the claims includes product by process language. The discussion above tends to show the claimed product is the same as what is taught by the prior art. “[E]ven 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113. In this case, the process of Imamura in view of Terasaki appears to form the same product as that of the instant invention. Applicant may provide evidence proving an unobvious difference between the products.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 3 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed August 25, 2025, have been fully considered but they are not persuasive.
Applicant argues that the invention shows unexpected effects. However, the data is not sufficient to show unexpected results. The silver taught by Imamura has not been excluded from the claim.
Applicant argues that the D ratio in Imamura is a consequence rather than intentionally set. However, why and how Imamura arrives at the ratio is irrelevant. The prior art still reads on the claim.
Applicant argues that the method affects the structure. However, Applicant has not shown or explained how the specific method steps arrives at a structure different from that of the prior art.
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 Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781