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 .
Information Disclosure Statement
The IDS filed on August 27th, 2026 has been considered.
Remarks
The amendment filed on June 09th, 2026 has been considered. By this amendment, claims 1, 4, and 7 have been amendment and claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, 18, 20, and 21 have been cancelled. Accordingly, claims 1, 4, 7, 10, 13, 16, and 19 are pending in the present application in which claims 1, 4, and 7 are in independent form.
New Grounds of Rejection
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, 4, 7, 10, 13, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kameda et al. (U.S. Pub. 2019/0358751) in view of Ueshima et al. (U.S. Pub. 2020/0284282).
In re claim 1, Kameda discloses a solder alloy consisting of:
3% by mass or more and 8% by mass or less of Cu (0.5% to 8%, see paragraph [0017]); 6% by mass or more and 20% by mass or less of Sb (5% to 15%, see paragraph [0017]); 0.01% by mass or more and 0.5% by mass or less of Ni (0.025% to 0.7%, see paragraph [0017]); 0.001% by mass or more and 1% by mass or less of Co (0.025% to 0.3% , see paragraph [0017]); and a balance being Sn (see paragraph [0017]).
Kameda discloses that the solder alloy consisting of Cu in a range of 0.5% to 8% which is overlapping with claimed invention ranges of 3% by mass or more and 8% by mass or less and 0.025% to 0.7% of Ni which is overlapping with claimed invention ranges of 0.01% by mass or more and 0.6% by mass or less, therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the Cu content in the solder alloy to be in a range of 3% by mass or more and 8% by mass or less and the Ni content in the solder alloy to be in a range 0.01% by mass or more and 0.6% by mass or less during routine experimentation since it is respectfully submitted that there is no evidence indicating that the percentage by mass ranges of Cu and Ni in the solder alloy is critical and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Kameda is silent to wherein an amount of Cu (% by mass) and an amount of Ni (% by mass) satisfying following formula: the amount of Ni/(the amount of Cu+the amount of Ni) < 0.10.
However, as disclosed by Kameda above, the ranges of percentage by mass of Cu and Ni are similar to that of the ranges of the Applicant’s claimed invention and thus it is respectfully submitted that it would have been obvious to one of skill the art to select an amount of Cu and an amount of Ni to satisfy the proviso of an amount of Cu (% by mass) and an amount of Ni (% by mass) satisfying following formula: the amount of Ni/(the amount of Cu + the amount of Ni) < 0.10.
Kameda is further silent to wherein the solder alloy further consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag; optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less;
However, Ueshima discloses in a same field of endeavor, a solder alloy consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag (2%-4%) (see paragraph [0028]); optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less (0.1% or less of Fe, see paragraphs [0030], [0073]).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Ueshima into the solder alloy of Kameda in order to enable wherein the solder alloy further consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag; optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less in Kameda to be formed in order to improve the wettability and adhesion strength of the solder alloy. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
In re claim 4, Kameda discloses a solder bonding material comprising: a solder alloy consisting of: 3% by mass or more and 8% by mass or less of Cu (0.5% to 8%, see paragraph [0017]); 6% by mass or more and 20% by mass or less of Sb (5% to 15%, see paragraph [0017]); 0.01% by mass or more and 0.5% by mass or less of Ni (0.025% to 0.7%, see paragraph [0017]); 0.001% by mass or more and 1% by mass or less of Co (0.025% to 0.3% , see paragraph [0017]); and a balance being Sn (see paragraph [0017]).
Kameda discloses that the solder alloy consisting of Cu in a range of 0.5% to 8% which is overlapping with claimed invention ranges of 3% by mass or more and 8% by mass or less and 0.025% to 0.7% of Ni which is overlapping with claimed invention ranges of 0.01% by mass or more and 0.6% by mass or less, therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the Cu content in the solder alloy to be in a range of 3% by mass or more and 8% by mass or less and the Ni content in the solder alloy to be in a range 0.01% by mass or more and 0.6% by mass or less during routine experimentation since it is respectfully submitted that there is no evidence indicating that the percentage by mass ranges of Cu and Ni in the solder alloy is critical and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Kameda is silent to wherein an amount of Cu (% by mass) and an amount of Ni (% by mass) satisfying following formula: the amount of Ni/(the amount of Cu+the amount of Ni) < 0.10.
However, as disclosed by Kameda above, the ranges of percentage by mass of Cu and Ni are similar to that of the ranges of the Applicant’s claimed invention and thus it is respectfully submitted that it would have been obvious to one of skill the art to select an amount of Cu and an amount of Ni to satisfy the proviso of an mount of Cu (% by massk) and an amount of Ni (% by mass) satisfying following formula: the amount of Ni/(the amount of Cu + the amount of Ni) < 0.10.
Kameda is silent to wherein the solder alloy further consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag; optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less;
However, Ueshima discloses in a same field of endeavor, a solder alloy consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag (2%-4%) (see paragraph [0028]); optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less (0.1% or less of Fe, see paragraphs [0030], [0073]).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Ueshima into the solder alloy of Kameda in order to enable the solder alloy further consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag; optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less in Kameda to be formed in order to improve the wettability and adhesion strength of the solder alloy. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
In re claim 7, Kameda discloses a solder paste comprising: a flux; and a powder comprising: a solder alloy consisting of 3% by mass or more and 8% by mass or less of Cu (0.5% to 8%, see paragraph [0017]); 6% by mass or more and 20% by mass or less of Sb (5% to 15%, see paragraph [0017]); 0.01% by mass or more and 0.5% by mass or less of Ni (0.025% to 0.7%, see paragraph [0017]); 0.001% by mass or more and 1% by mass or less of Co (0.025% to 0.3% , see paragraph [0017]); a balance being Sn (see paragraph [0017]); and an amount of Cu (% by mass) and an amount of Ni (% by mass) satisfying following formula: the amount of Ni/ (the amount of Cu + the amount of Ni) < 0.10.
Kameda discloses that the solder alloy consisting of Cu in a range of 0.5% to 8% which is overlapping with claimed invention ranges of 3% by mass or more and 8% by mass or less and 0.025% to 0.7% of Ni which is overlapping with claimed invention ranges of 0.01% by mass or more and 0.6% by mass or less, therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the Cu content in the solder alloy to be in a range of 3% by mass or more and 8% by mass or less and the Ni content in the solder alloy to be in a range 0.01% by mass or more and 0.6% by mass or less during routine experimentation since it is respectfully submitted that there is no evidence indicating that the percentage by mass ranges of Cu and Ni in the solder alloy is critical and it has been held that it is not inventive to discover the optimum or workable ranges of a result-effective variable within given prior art conditions by routine experimentation. See MPEP § 2144.05. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Kameda is silent to wherein an amount of Ni (% by mass) satisfying following formula: the amount of Ni/(the amount of Cu+the amount of Ni) < 0.10.
However, as disclosed by Kameda above, the ranges of percentage by mass of Cu and Ni are similar to that of the ranges of the Applicant’s claimed invention and thus it is respectfully submitted that it would have been obvious to one of skill the art to select an amount of Cu and an amount of Ni to satisfy the proviso of an amount of Cu (% by mass) and amount of Ni (% by mass) satisfying following formula: the amount of Ni/(the amount of Cu+the amount of Ni) < 0.10.
Kameda is silent to wherein the solder alloy further consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag; optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less;
However, Ueshima discloses in a same field of endeavor, a solder alloy consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag (2%-4%) (see paragraph [0028]); optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less (0.1% or less of Fe, see paragraphs [0030], [0073]).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by Ueshima into the solder alloy of Kameda in order to enable the solder alloy further consisting of optionally 0.1% by mass or more and less than 3% by mass of Ag; optionally at least one of Al, Ti, Si, Fe, and Ge in a total amount of 0.003% by mass or more and 0.5% by mass or less in Kameda to be formed in order to improve the wettability and adhesion strength of the solder alloy. Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
In re claim 10, Kameda in combination with Ueshima discloses a solder bonding portion comprising: the solder alloy according to claim 1 (see paragraph [0017] of Kameda and paragraphs [0028], [0030], [0073] of Ueshima).
In re claim 13, Kameda in combination with Ueshima discloses an electronic circuit board comprising: a substrate (12,22,32,42); a solder bonding portion (14,24,34,44) comprising the solder alloy according to claim 1; and an electronic component (11,21,31,41) bonded on the substrate (12,22,32,42) via the solder bonding portion (14,24,34,44) (see paragraphs [0151], [0152], [0153] and figs. 1A-D of Ueshima).
In re claim 16, Kameda in combination with Ueshima discloses a semiconductor package comprising: a substrate (12,22,32,42); a bonding portion (14,24,34,44) comprising the solder alloy according to claim 1; and a semiconductor element (11,21,31,41) bonded on the substrate (12,22,32,42) via the bonding portion (14,24,34,44) (see paragraphs [0151], [0152], [0153] and figs. 1A-D of Ueshima).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kameda et al. (U.S. Pub. 2019/0358751) in view of Ueshima et al. (U.S. Pub. 2020/0284282), as applied to claim 1 above, and further in view of JP-6773143-B, cited in the IDS filed on 09/09/2022.
In re claim 19, Kameda in combination with Ueshima discloses a semiconductor package comprising: a substrate (12,22,32,42); a bonding portion (14,24,34,44); a semiconductor element (11,21,31,41) bonded on the substrate (12,22,32,42) via the bonding portion (14,24,34,44) (see paragraphs [0151], [0152], [0153] and figs. 1A-D of Ueshima); a bonding solder portion comprising the solder alloy according to claim 1 (see paragraph [0028] and Table 1 of Ueshima) but is silent to wherein a heat dissipation substrate bonded to the substrate via the bonding solder portion.
However, JP-677143-B discloses in a same field of endeavor, a semiconductor package 100 comprising: a substrate 12; a bonding portion (upper 10); a semiconductor element 11 bonded on the substrate 12 via the bonding portion; a bonding solder portion (lower 10) comprising solder alloy; and a heat dissipation substrate 13 bonded on the substrate 12 via the bonding solder portion (see paragraph [0047] of machine translation and fig. 1).
Therefore, it is respectfully submitted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to incorporate the technique as taught by JP-677143-B into the semiconductor package of Kameda in order to enable wherein a heat dissipation substrate bonded to the substrate via the bonding solder portion in Kameda to be formed in order to obtain an excellent heat dissipation property and an effect of improve the thermal fatigue life of the semiconductor package (see paragraph [0020], machine translation, of JP-677143-b). Furthermore, it would have been obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007). “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id.
Response to Applicant’s Amendment and Arguments
Applicant’s arguments with respect to claim(s) 1, 4, 7, 10, 13, 16, and 19 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.
Conclusion
Applicant's amendment necessitated the new ground(s) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHIEM D NGUYEN whose telephone number is (571)272-1865. The examiner can normally be reached Monday-Friday 8:00 AM - 6:00 PM.
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, N. Drew Richards can be reached at (571) 272-1736. 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.
/KHIEM D NGUYEN/Primary Examiner, Art Unit 2892
Prosecution Insights