DETAILED ACTION
This Notice is responsive to communication filed on 04/02/2026.
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 information disclosure statement (IDS) submitted on 12/19/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
An amendment filed on 04/02/2026 has been acknowledged and entered into the record. Claims 1, 2, 5, 8, and 12 remain pending in the application.
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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ejiri et al. (US 20220053647) and further in view of Akira et al. (JP 2017183458A) and Kanbe (US 20190164879).
Rejection Note: Italicized claim limitations indicate limitations that are not explicitly disclosed in the primary reference, but disclosed in the secondary reference(s).
Regarding claim 1, Ejiri discloses a mounting board Fig. 1: 10 comprising:
an electronic component Fig. 1: 8 having at least a pair of first terminals Fig. 1: 9; and
a circuit board Fig. 1: 1 having at least a pair of second terminals Fig. 1: 3,
wherein the first terminal Fig. 1: 9 and the second terminal Fig. 1: 3 are bonded to each other by a bonding material Fig. 1: 11,
wherein the first terminal Fig. 1: 9, the second terminal Fig. 1: 3, and the bonding material Fig. 1: 11 are disposed inside a recessed portion formed in a resin layer Fig. 1: 12 such that a periphery thereof is surrounded by the resin layer Fig. 1: 12 (shown in Fig. 1(f)).
wherein when a total thickness of the first terminal, the second terminal, and the bonding material is a dimension h1, the dimension h1 is 1 µm to 10 µm, and
wherein when a width of the first terminal is a dimension d1 and a width of the recessed portion of the resin layer is a dimension d2, a value of dimension d2 – dimension d1 is 10 µm or smaller.
Akira teaches the following claim limitations not disclosed by Ejiri:
wherein when a total thickness Fig. 2A: L11, L12 of the first terminal Fig. 2A: 32B, the second terminal Fig. 2A: 42, and the bonding material Fig. 2A: 45B is a dimension h1, the dimension h1 is 1 µm to 10 µm.
In para. 0038 and Fig. 2A Akira discloses a first distance L11 of 0.5µm and a second distance L12 of 2µm that show the distance between a bottom surface of the electronic component 11 and a top surface of the circuit board 40. These values can be used to show a height or total thickness from the bottom portion of the electronic component to the top surface of the substrate of less than 10µm as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to modify the thickness of the first terminal, the second terminal, and the bonding material of Ejiri’s invention to include the range limitation of Akira’s invention to allow for a communication unit Fig. 2A: 27, used in communicating with the outside via the communication unit, to be present (para. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Kanbe discloses the following claim limitations not disclosed by Ejiri:
wherein a width of the first terminal is a dimension d1 and a width of the recessed portion of the resin layer is a dimension d2, a value of dimension d2 – dimension d1 is 10 µm or smaller.
In para. 0077, Kanbe teaches a width of the metal post Fig. 10: 31, which is the same as a width of the first terminal Fig. 10: 41 is about 15µm to 45µm, which is also the same range as the opening Fig. 7B: 17a. For example, in this case, the width of the terminal d1 can equal 20µm and the width of the recessed portion can equal 20µm, having a difference of zero, which is within the claimed range (<10µm). Alternatively, the width of the terminal d1 can equal 15µm and the width of the recessed portion can equal 20µm, having a difference of 5µm which is also within the claimed range (<10µm).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the width of the first terminal and the width of the recessed portion of the resin layer of Ejiri’s invention to have a difference of 10µm or smaller, as taught by Kanbe. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 5, Ejiri discloses the mounting board according to claim 1, wherein the resin layer Fig. 1: 12 present between the pair of first terminals Fig. 1: 9 comes into contact with a main body portion of the electronic component Fig. 1: 8 (shown in Fig. 1(f)).
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ejiri et al. (US 20220053647), Akira et al. (JP 2017183458A), and Kanbe (US 20190164879) as applied to claim 1 above, and further in view of Osamu et al. (JP 2017098319A).
Rejection Note: Italicized claim limitations indicate limitations that are not explicitly disclosed in the primary reference, but disclosed in the secondary reference(s).
Regarding claim 2, Osamu discloses the following claim limitations not disclosed by Ejiri, Akira, and Kanbe:
wherein a constituent material Fig. 6: 46 is disposed between the bonding material Fig. 6: 42 and the resin layer Fig. 6: 16.
It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to modify Ejiri, Akira, and Kanbe with Osamu in order that a constituent material be included in the mounting board for the purpose of filling the gaps in the mounting board (para. 0042).
Regarding claim 12, Ejiri discloses the mounting board according to claim 2, wherein the resin layer Fig. 1: 12 present between the pair of first terminals Fig. 1: 9 comes into contact with a main body portion of the electronic component Fig. 1: 8 (shown in Fig. 1 (f)).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ejiri et al. (US 20220053647) and further in view of Akira et al. (JP 2017183458A), and Kanbe (US 20190164879).
Rejection Note: Italicized claim limitations indicate limitations that are not explicitly disclosed in the primary reference, but disclosed in the secondary reference(s).
Regarding claim 8, Ejiri discloses a circuit board comprising:
at least a pair of second terminals Fig. 1: 3,
wherein a bonding material Fig. 1: 11 is disposed on the second terminal Fig. 1: 3,
wherein the second terminal Fig. 1: 3 and the bonding material Fig. 1: 11 are disposed inside a recessed portion formed in a resin layer Fig. 1: 9 such that a periphery thereof is surrounded by the resin layer Fig. 1: 9 (shown in Fig. 1(f)),
wherein when a total thickness of the second terminal and the bonding material is a dimension h2, the dimension h2 is 1 µm to 10 µm, and
wherein when a width of the recessed portion of the resin layer is a dimension d2, the dimension d2 is 2 µm to 30 µm.
Akira teaches the following claim limitations not disclosed by Ejiri:
wherein when a total thickness Fig. 2A: L11, L12 of the first terminal Fig. 2A: 32B, the second terminal Fig. 2A: 42, and the bonding material Fig. 2A: 45B is a dimension h1, the dimension h1 is 1 µm to 10 µm.
In para. 0038 and Fig. 2A Akira discloses a first distance L11 of 0.5µm and a second distance L12 of 2µm that show the distance between a bottom surface of the electronic component 11 and a top surface of the circuit board 40. These values can be used to show a height or total thickness from the bottom portion of the electronic component to the top surface of the substrate of less than 10µm as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention, to modify the thickness of the first terminal, the second terminal, and the bonding material of Ejiri’s invention to include the range limitation of Akira’s invention to allow for a communication unit Fig. 2A: 27, used in communicating with the outside via the communication unit, to be present (para. 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Kanbe discloses the following claim limitations not disclosed by Ejiri:
wherein when a width of the recessed portion of the resin layer is a dimension d2, the dimension d2 is 2 µm to 30 µm.
In para. 0077, Kanbe teaches a width of the metal post Fig. 10: 31, which is the same as a width of the first terminal Fig. 10: 41 is about 15µm to 45µm, which is also the same range as the opening Fig. 7B: 17a (i.e. recessed portion), and includes/overlaps the range limitation taught in claim 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the width of the first terminal and the width of the recessed portion of the resin layer of Ejiri’s invention to include the range taught by Kanbe. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Response to Arguments
Applicant's arguments filed 04/02/2026 have been fully considered but they are not persuasive.
With respect to Akira et al. (JP 2017183458A) teaching the claimed thickness range of the dimension h1, Applicant argues that the reference only provides these heights as examples, but claims they are not limited to these values, and further argues that there is no reason or advantage for choosing these values such as that of the claimed invention of the present application. Examiner reminds Applicant that the reference does not have to teach the limitations of the present application for the same reason(s) as the claimed invention. Akira teaches a distance of the gaps, namely L11 and L12 in para. 0017, and also teaches values that are within the range of the claimed invention. Even if the values are in an Example (as taught in para. 0038), they are still taught by the reference. The claimed range is also used as examples in the present application. As disclosed in the rejection above, In re Wertheim, a prima facie case of obviousness exists when there claimed ranges over lap that disclosed by the prior art.
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the distances taught by Akira in the Fig. 2 embodiment allows a communication unit Fig. 2A: 27, used in communicating with the outside via the communication unit, to be present (para. 0038).
With respect to Kanbe (US 20190164879) teaching the claimed difference between d2 and d1 being 10µm or smaller, Applicant argues that the difference of zero is only taught in a step of manufacturing the device, and not in the final end product. Examiner points out that the resist layer Fig. 7A/7B: 17 is not used/mentioned in the previous rejection of the claim limitation. Fig. 7B: 17a is used to teach the opening (i.e. recessed portion) in which the metal post (i.e. terminal) Fig. 10: 31 is disposed, which have the same taught range (para. 0077). For example, in this case, the width of the terminal d1 can equal 20µm and the width of the recessed portion can equal 20µm, having a difference of zero, which is within the claimed range (<10µm). Alternatively, the width of the terminal d1 can equal 15µm and the width of the recessed portion can equal 20µm, having a difference of 5µm which is also within the claimed range (<10µm).
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 NKECHINYERE ESIABA whose telephone number is (571)272-0720. The examiner can normally be reached Monday - Friday 10am-5pm EST.
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/Nkechinyere Esiaba/Examiner, Art Unit 2817
/Kretelia Graham/Supervisory Patent Examiner, Art Unit 2817
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