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 .
This action is in response to the amendment filed on June 20, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 26 and 29-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 26, the phrase “wherein a content of the filler in each of the first region and the second region is greater than a content of the filler in the third region, and wherein the third region of the insulating layer does not have a reinforcing member including the filler” is confusing. The first part of the phrase recites “wherein a content of the filler in each of the first region and the second region is greater than a content of the filler in the third region,” which implies that the third region also includes some filler, whereas the second part of the phrase recites “wherein the third region of the insulating layer does not have a reinforcing member including the filler,” which appears contradictory to the recitation of first part of the phrase.
Claims 29-37 depend upon claim 26 and inherit the same deficiency.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanville (US 5,670,250), in view of Carney (US 2013/0011645).
Regarding claim 26, Sanville, figure 7, discloses a circuit board, comprising: an insulating layer (10) including a resin and a filler disposed in the resin (see figure, resin 12, filler 18, 20); a circuit pattern (16) disposed on the insulating layer; and a via (22) passing through the insulating layer, wherein the insulating layer includes a first region closest to an upper surface of the resin, a second region closest to a lower surface of the resin, and a third region between the first and second regions (see figure), wherein the resin of the insulating layer in the first to third regions contain a same insulating material ( 12, resin) and are formed integrally with each other (see figure), wherein a content of the filler in each of the first region and the second region is greater than a content of the filler in the third region (see figure, the filler content in the first and second region is more than that in the middle region).
Sanville does not disclose wherein the third region of the insulating layer does not have a reinforcing member including the filler.
However, Sanville, discloses the filler content in different proportion, for example that in figure 7, and 9 (and in the prior art figure 6, and 8).
Carney, figure 1, discloses an insulation layer with three regions, upper and lower regions with filler 12, 14), and the middle region (14) without any filler. Carney further discloses the insulating layer formed of polyimide (paragraph 0004-0049).
Therefore, it would have been obvious to been obvious to a person having ordinary skill in the art at the time of effective filing date of the application to provide the board of Sanville with the third region of the insulating layer not having a reinforcing member including the filler, from the teaching of Carney, in order to have desired insulating property, as well as, mechanical strength.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960), and further:
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanville, as applied to claim 26 above, and further in view of Oh (US 2017/0094786).
Regarding claim 29, Sanville, wherein a content of the filler has a range of 10 vol.% to 40 vol% of a total volume of the insulating layer (see abstract, to reduce dielectric constant)).
Sanville, does not explicitly disclose wherein the filler includes at least one concave portion provided on a surface
However, Sanville discloses a hollow filler (column 3, line 40-47), and hollow part near the surface would create concave portion.
Additionally, Oh, figure 2, discloses a filler with concave surface on the surface, and describe better insulating characteristic (paragraph 0004).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing date of the application to provide the board of Sanville with the filler having at least one concave portion provided on a surface, as taught by Oh (and Sanville, itself) in order to have better insulating characteristic).
Claim(s) 30-32, and 34-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over the modified board of Sanville, as applied to claim 29 above, and further in view of Yonemura (US 7,709,939).
Regarding claim 30, the modified board of Sanville further disclose wherein a porosity corresponds to a volume occupied by the concave portion in a total volume of the filler and has a range of 20% to 35% (obvious to control the dielectric constant, as Sanville discloses hollow filler, column 3, line 40-47), and wherein a dielectric constant (Dk) of the insulating layer including the resin and the filler is 2.5 or less (obvious Sanville discloses a low dielectric constant, as low as, 3.5, see the abstract, as the dielectric constant could be adjusted based on the porosity / through hole in filler. Additionally, see explanation with respect to Yonemura).
Yonemura discloses a circuit board with an insulating layer with inorganic filler with a range of about 2 to 9 (see abstract).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing date of the application to provide the modified board of Sanville with a dielectric constant (Dk) of the insulating layer including the resin and the filler is 2.5 or less, as taught by Yonemura (and Sanville, itself) in order to have desired electrical property for high frequency devices.
Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 31, the modified board of Sanville further discloses wherein a dielectric constant (Dk) of the insulating layer is 2.5 or less (obvious as applied to claim 29 above).
Regarding claim 32, the modified board of Sanville further discloses
wherein the concave portion includes a recess not penetrating the filler or a through hole passing through the filler (obvious as applied to claim 29 above).
Regarding claim 34, the modified board of Sanville further discloses wherein the filler includes a ceramic material of any one of SiO2, ZrO3, HfO2, and TiO2, (silica, column 4, line 15-26, and TiO2, (column 5, line 5 to column 6, line 7) and has a dielectric constant in a range of 3.7 to 4.2 (obvious as the porosity / through hole formed to reduce the dielectric constant of the insulating layer, as explained / applied to claim 29 above).
Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 35, the modified board of Sanville further discloses wherein the filler has a content in a range of vol.% to 15 vol%, and wherein the porosity has a range of 20% to 35% (obvious as applied to claim 29 above, in order to have desired dielectric constant).
Regarding claim 36, the modified board of Sanville further discloses wherein the filler has a content in a range of vol.% to 30 vol%, and wherein the porosity has a range of 30% to 35% (obvious as applied to claim 29 above, in order to have desired dielectric constant).
Regarding claim 37, the modified board of Sanville further discloses wherein the filler has a content in a range of vol.% to 40 vol%, and wherein the porosity has a range of 32% to 35% (obvious as applied to claim 29 above, in order to have desired dielectric constant).
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanville, as applied to claim 29 above, and further in view of Nagai (US 5,677,045).
Regarding claim 33, Sanville further discloses wherein the resin has a dielectric constant in a range of 2.3 to 2.5 (obvious as applied above).
Sanville does not disclose wherein the resin is formed of a modified epoxy or maleimide series.
Nagai discloses a circuit board with the resin being formed of maleimide resin (column 5, line 1-7, column 8, line 49-55), and further discloses maleimide resin, with low dielectric constant, would have good workability, and thermal resistivity (column 12, line 6-16).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of effective filing date of the application to provide the board of Sanville with the resin is formed of a modified epoxy or maleimide series, as taught by Nagai, in order to desired insulating properties.
Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant’s arguments with respect to claim(s) 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 / new explanation of the rejection.
Additionally, applicant, regarding secondary art to Carney, argues that
Carney fails to overcome the deficiencies of Sanville. That is, Carney discloses an insulating layer provided with multiple layers. When the insulating layer is provided with multiple layers, resins of the multiple layers may have different materials, and this may further increase the change in width of the via penetrating the multiple layers. Further, when the multiple layers of Carney's insulating layer include the same material, a process of bonding the multiple layers to each other must be performed. In the case of bonding of the multiple layers, a problem arises in which reliability of the via is deteriorated at an interface between the multiple layers. More specifically, when a via hole is formed in an insulating layer in which multiple layers are joined, expansion of the via hole occurs at the interface between the multiple layers, which may deteriorate electrical characteristics of the via filling the via hole.
This is not found to be persuasive.
Carney discloses all the three regions formed of polymer base polyimide (paragraph 0034), and once bonded they will be integrated. Further, the primary art to Sanville discloses a via hole with three different region of filler without any problem with via hole.
Therefore, the modified board if Sanville meets the limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee (US 2015/0053458), figure 2, and 3, discloses an insulating film formed of organic material with inorganic filler / glass fiber.
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).
(With addition of two limitation in independent claim 26, the scope of the claim 26, as well as, the depended claims are changed, resulting the action being Final).
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 ISHWARBHAI B PATEL whose telephone number is (571)272-1933. The examiner can normally be reached M-F: 8:30 AM-5:00 PM.
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/ISHWARBHAI B PATEL/ Primary Examiner, Art Unit 2847
IBP / September 12, 2025