DETAILED ACTION
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5-9, 11, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cok et al. (US 2017/0256521; herein “Cok”) in view of Tanaka et al. (US 2013/0134455; herein “Tanaka”).
Regarding claim 1, Cok discloses in Figs. 16E-16F and related text an electronic structure comprising:
a substrate (50) having a main surface (e.g. surface at bottom of recess filled by 54);
a functional unit (e.g. 20/26/26/30/40) having a lower surface and being disposed such that the lower surface faces the main surface, the functional unit including
a functional element (20) that has an electronic function (see [0098]),
a conductive member (at least a portion of 30, see [0098]) electrically connected to the functional element, and
a protective member (26 and/or 28 prior to being patterned to form openings for tethers 56/58, see [0104], [0105], [0129], [0133]; see also Fig. 2 to illustrate the disposition of 28 below 20) having an insulating property, and being configured to protect the functional element; and
a support layer (e.g. 54, see [0129]) provided between the substrate and the functional unit, such that a lower surface and an upper surface of the support layer respectively contact the main surface of the substrate and the lower surface of the functional unit, and the functional unit it is peelable (e.g. “capable of being removed and reused,” see American Heritage® Dictionary of the English Language) from the upper surface of the support layer, an entire area of the upper surface of the support layer (e.g. area of upper surface of 54), in a plan view of the electronic structure, being smaller than an entire area of the lower surface of the functional unit (e.g. area of lower surface of 26/28 and lower surface of 30 prior to patterning of 26/28 to form openings for tethers 56/58),
wherein a lower surface of the protective member and a lower surface of the conductive member form the lower surface of the functional unit, and
the upper surface of the support layer contains a first material as its principal component (54 is oxide, see [0131]), and the lower surface of the protective member contains a second material as its principal component, the first material being an inorganic material (54 is oxide, see [0131]).
Cok does not explicitly disclose
one of the first and second materials being an organic material.
In the same field of endeavor, Tanaka teaches in Fig. 10 and related text an electronic structure wherein the lower surface of the protective member (e.g. surface of 317/104, see [0041] and [0078]), the lower surface of the functional unit contains a second material as its principal component, and
wherein the second material being an organic material (see [0041] and [0078]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cok by having the protective member being a second material which is organic, as taught by Tanaka, in order to provide a well-known alternative encapsulation material which can protect the device. Further, Tanaka shows that polyimides and resins are equivalent encapsulation structures to oxides which known in the art. Therefore, because these two were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute the polyimide of Tanaka for the oxide of Cok.
Although shown by the prior art, it is the Office' s position that the limitation of “the functional unit it is peelable from the upper surface of the support layer” is directed to a method of using the device and/or is a functional limitation of the device claimed. Since the device of Cok and Tanaka has all of the structural limitations of the claimed invention the device is capable of being operated in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.II and 2112.01. Further, while features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114.I and 2112.01.
Regarding claim 2, the combined device shows
the second material at the lower surface of the functional unit is the organic material (Tanaka: surface of 317/104 is polyimide or resin, see [0041], [0078]),
the first material at the upper surface of the support layer is the inorganic material (Cok: 54, see [0131]), and
the main surface of the substrate (Cok: 50) contains inorganic material as its principal component (see [0129).
Regarding claim 3, the combined device shows
the organic material at the lower surface of the functional unit is a resin (Tanaka: surface of 317/104 is polyimide or resin, see [0041], [0078]), and
the inorganic material at the upper surface of the support layer is an oxide or nitride (Cok: 54, see [0131]).
Regarding claim 5, Cok further discloses both the lower surface of the conductive member (lower surface of at least a portion of 30, e.g. lower portion) and the lower surface of the protective member (lower surface of 26 and/or 28) are in contact with the upper surface of the support layer (see Fig. 16F).
Regarding claim 6, Cok further discloses
the functional element (20) is electrically connected to the conductive member by a wiring member (e.g. portion of 30 between 22 and lower portion 30) having electrical conductivity.
Regarding claim 7, Cok further discloses wherein the conductive member (at least a portion of 30) is a metallic film (see [0102]).
Regarding claim 8, Cok further discloses wherein the metallic film is gold, platinum, or alloy containing at least one of gold and platinum (see [0102]).
Regarding claim 9, Cok further discloses
wherein the protective member (26/28) further comprises a base film, a lower surface thereof forming the lower surface of the protectice member.
Regarding claim 11, Cok further discloses
the functional unit is provided in plurality, and the plurality of functional units are arranged on the main surface of the substrate (see [0129] and Fig. 16F), and
the support layer is provided in plurality, and the plurality of support layers are respectively provided at positions beneath respective ones of the plurality of functional units (see [0129] and Fig. 16F).
Regarding claim 15, Cok further discloses wherein the upper surface of the support layer and the lower surface of the functional unit are planar and parallel to each other, and the upper surface of the support layer is entirely overlapped by the lower surface of the functional unit in the plan view (e.g. in the interpretation where the “lower surface of the conductive member” is the lower surface which is in the plane of the upper surface of 53 and the “upper surface of the support layer” is the upper surface which is in the plane of the 26/28).
Regarding claim 16, Cok further discloses the support layer (54) is provided between the substrate and the functional unit such that the main surface of the substrate (e.g. surface at bottom of recess filled by 54) is spaced apart from the lower surface of the functional unit in a direction orthogonal to the main surface of the substrate.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cok in view of Tanaka as applied to claim 2 above, and further in view of Bower (US 2013/0221355; herein “Bower”).
Regarding claim 4, the combined device shows the organic material at the lower surface of the functional unit is a polyimide (Tanaka: surface of 316/317 is polyimide, see [0078]),
but does not explicitly disclose
the inorganic material at the upper surface of the support layer (Cok: sacrificial layer 54) is a silicon oxide.
In the same field of endeavor, Bower teaches in Fig. 5D-5E and related text an electronic structure wherein the inorganic material at the upper surface of the support layer (sacrificial layer 12) silicon oxide (see [0074]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cok by having the inorganic material at the upper surface of the support layer silicon oxide, as taught by Bower, in order to provide a well-known alternative sacrificial layer which can be easily removed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. In this case, the list of materials are all known oxide dielectrics. see MPEP 2144.06.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/165442 (herein “’442”) in view of Tanaka and Bower. This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, claim 1 of ‘442 teaches all of the claimed limitations except for one of the protective member and the support layer being organic and the other being inorganic.
In the same field of endeavor, Tanaka and Bower teach the materials as applied in claims 1 and 4 above, and for substantially the same reasons.
Response to Arguments
Applicant's arguments filed 4/28/2026 have been fully considered but are not persuasive.
Applicant argues (page 6-10) that the functional unit of Cok is not “peelable” from the upper surface of the support layer because the support layer of Cok is etched.
In response, the examiner disagrees. Specifically, it is first noted that it is the Office' s position that the limitation of “the functional unit it is peelable from the upper surface of the support layer” is directed to a method of using the device and/or is a functional limitation of the device claimed. Since the device of Cok and Tanaka has all of the structural limitations of the claimed invention the device is capable of being operated in the manner claimed by the applicant. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.II and 2112.01. Further, while features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114.I and 2112.01.
Second, even assuming, for the sake of argument, that the claim requires the art to show a “peelable” functional unit, the Examiner notes that in accordance with MPEP 2111, USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Therefore the claim limitation “peelable” has been given its broadest reasonable interpretation and merely requires, e.g., “capable of being removed and reused,” see American Heritage® Dictionary of the English Language). As the functional unit of Cok is removed from 54 and used in a bonded device (see, e.g., Fig. 18), it is “capable of being removed and reused,” and therefore teaches the claimed limitation.
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 Lauren R Bell whose telephone number is (571)272-7199. The examiner can normally be reached M-F 8am-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, William Kraig can be reached at (571) 272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN R BELL/Primary Examiner, Art Unit 2896
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