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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 JUNE 2026 has been entered.
Status of Claims
The claim set submitted with the RCE is acknowledged and considered. In the claim set, Claim 1 is ‘CURRENTLY AMENDED’; Claims 2-7 AND 10 are ‘CANCELLED’; AND Claims 8, 9 and 11-14 are ‘PREVIOUSLY PRESENTED’.
Current pending claims are Claims 1, 8, 9 and 11-14 and are considered on the merits below.
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.
Response to Amendment
Applicant’s arguments, see REMARKS, filed 06 MARCH 2026, with respect to the objection to the specification, the claim objection and the 112(b) rejection have been fully considered and are persuasive. The objection to the specification, the claim objection and the 112(b) rejection have been withdrawn.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the Office Action does not provide any reason why a person of ordinary skill in the art would have been motivated to combine the teachings of these references, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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.
Claims 1 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over TOYO, JP 11-195852 A, submitted on the Information Disclosure Statement on 31 MAY2023, Foreign Patent Documents Cite No. 1, and further in view of JP 2006-157257 A, MORI, submitted on the Information Disclosure Statement on 31 MAY 2023, Foreign Patent Documents, Cite No. 2.
Applicant’s invention is directed towards a device, an element mounting substrate.
Regarding Claim 1, the reference TOYO discloses an element mounting substrate, Figure 7, [0001], SAW filter, comprising:
an insulation layer, Figure 1 and 3, lower half of where wiring 24 and 25 are located, [0003, 0005-000];
an input wiring line and an output wiring line disposed on the insulation layer, Figure 1 and 2, wiring 24 and 25, [0003, 0005-000] ; and
a ground layer disposed on the insulation layer, Figure 1 and 3, ground pattern 21, located around the input wiring line and the output wiring line, Figure 1 and 3, on printed board 20, and comprising an exposed region, Figure 1 and 3, insulating line 30 is an exposed region, where the insulation layer is exposed wherein the exposed region of the ground layer overlaps a region where the input wiring line and the output wiring line are close to each other, Figure 1 and 3, [0003, 0005-0008].
TOYO discloses the claimed invention, but is silent in regards to element mounting substrate according to claim 1, further comprising: a first terminal disposed on the input wiring line and connected to an external element, and a first wiring line connected to the first terminal, wherein the output wiring line comprises a second terminal connected to the external element and a second wiring line connected to the second terminal, the first terminal and the second terminal are both disposed on a first surface of the insulation layer that is the same surface that the ground layer is disposed on and on an opposite surface of the insulation layer from the surface that the ground layer is disposed on .
The reference MORI discloses an element mounting substrate, abstract, SAW element, Figure 2, chip 5, [0025], comprising : an insulation layer, Figure 2, ceramic insulating layer 2, a first terminal disposed on an input wiring line and connected to an external element, and a first wiring line connected to the first terminal, wherein an output wiring line comprises a second terminal connected to the external element and a second wiring line connected to the second terminal, Figure 2(a), [0027, 0033], paragraph starting with : Specifically, the plane connection conductors 18a and 18b are connected to the input / output electrodes 14a and 14b,…and electrodes 3a, b, and conductors 4a1-3.
In addition, MORI discloses the first terminal and the second terminal are both disposed on a first surface of the insulation layer that is the same surface that the ground layer is disposed on an opposite surface of the insulation layer from the surface that the ground layer is disposed on, placing the electrodes 14a, 14b in a planar connection to the conductors 18a, 18b, [0033], Figure 2 and are connect through conductors 4a1-3 to back electrode 3b on opposite side of insulation 2 and ground 15; and the input wiring line comprises a third terminal different from the first terminal, electrodes 3a/3b are different than the electrodes 14a, 14b, the output wiring line comprises a fourth terminal different from the second terminal, conductors 4a1-3 are different than 18a, 18b, the third terminal and the fourth terminal are disposed on a different surface of the insulation layer from the first terminal and the second terminal, and the exposed region extends to any one side of the insulation layer, Figure 2, conductors 18a, 18b are on back surface, while conductors 4a1-3 are on opposite front surface.
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date to have the first terminal and the second terminal are disposed on a same insulation layer as the ground layer to prevent any mounting failures and take into account any unevenness in the device, MORI, [0031-0033]. In addition , it would be obvious to one having ordinary skill in the art before the effective filing date to modify the TOYO reference with the configuration as taught by MORI to prevent a mounting failure due to the unevenness of the device, MORI [0031-0033].
Additional Disclosures Included are: Claim 11: wherein the element mounting substrate according to claim 1,wherein the exposed region extends from any one side of the insulation layer to another side, TOYO Figure 1 and 3, [0005-0008].; Claim 12: wherein the element mounting substrate according to claim 1,wherein the exposed region extends from any one side of the insulation layer to the opposite side thereof, TOYO see Figure 1 and 3, [0005-0008].; and Claim 13: wherein the element mounting substrate according to claim 1, further comprising: a plurality of the exposed regions, TOYO Figure 1 and 3, [0007, 0008], part of grounding pattern position between wiring patterns 24 and 25 and insulation lines 40 and 41 that separate an area between two ground terminals are formed.
Regarding Claim 14, the reference TOYO disclose a SAW sensor device, Figure 7, [0001], SAW filter, comprising : a SAW element mounted on the element mounting substrate according to claim 1, see rejection of Claim 1 above, TOYO in view of MORI , the SAW element comprising a first electrode connected to the input wiring line and configured to generate an elastic wave, a second electrode connected to the output wiring line and configured to receive the elastic wave, and an element substrate configured to propagate the elastic wave, TOYO Figure 7, electrodes 9, see at least 2 electrodes in Figure, SAW device inherently make elastic waves, ‘First Embodiment’, [0007, 0010].
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over TOYO, JP 11-195852 A, submitted on the Information Disclosure Statement on 31 MAY2023, Foreign Patent Documents Cite No. 1, in view of JP 2006-157257 A, MORI, submitted on the Information Disclosure Statement on 31 MAY 2023, Foreign Patent Documents, Cite No. 2, and further in view of NEC, JP 2003-297982 A, submitted on the Information Disclosure Statement 31 MAY 2023, Foreign Patent Documents, Cite No. 3.
Regarding Claims 8 and 9, the references TOYO in view of MORI suggest the claimed invention, but is silent in regards to wherein the ground layer is covered or the exposed region is covered with an insulator.
The NEC reference discloses an element mounting substrate, Figure 1, sectional view of device, [0009], comprising: an insulating body covering the wiring boards, Figure 1, [0009], dielectric substrate 1 on which these components are mounted is resin-sealed with a mold resin 7.
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the TOYO refence such that the ground layer or the exposed region is covered with an insulator as taught by NEC so the device can be hermetically seal, abstract, and to protect the device from the external environment, [0002, 0006, 0007].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797
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