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 office action is in response to Applicant's remarks and amendments filed on 09/18/2025. Claim 1 is currently amended. Claims 14-15 are canceled. Claims 21-22 are newly added. Claims 1-13 and 16-22 are pending review in this action. The previous 35 U.S.C. 102 and 35 U.S.C. 103 rejections are withdrawn in light of Applicant's amendment to Claim 1 and the Applicant’s arguments. New grounds of rejection necessitated by Applicant's amendments are presented below.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 8-12, and 18-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimoichi (JP 2019161170 A) (citations made in reference to the English translation attached to this office action).
Regarding Claim 1, Shimoichi discloses a terminal comprising: a substrate (first electrode film, 7) made of metal; an electrode portion (second electrode film, 8) that is made of a same material as the substrate (first electrode film, 7) and functions as an electrode (Figure 5C, [0024, 0034-0035]). Shimoichi further discloses that the electrode portion (second electrode film, 8) is surrounded by the substrate (first electrode film, 7) in a view from a thickness direction, and overlapping the substrate (first electrode film, 7) in a view from a plane direction (see Figure 5C). Shimoichi further discloses an insulating resin (second insulating film, 12) that is between the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8), surrounds the electrode portion (second electrode film, 8), and electrically insulates the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8) from each other (Figure 5C, [0035-0036]). Thus, all of the limitations of Claim 1 are met.
Regarding Claim 2, Shimoichi further discloses that the insulating resin (second insulating film, 12) is on a part of a surface of the substrate (first electrode film, 7) and a part of a surface of the electrode portion (second electrode film, 8) on a first main surface side (top surface relative to Figure 5C) of the substrate (first electrode film, 7) (Figure 5C, [0035-0036]). Shimoichi further discloses that the terminal further comprises: an insulating film (first insulating film, 11) between the insulating resin (second insulating film, 12) on the first main surface side (top surface relative to Figure 5C) of the substrate (first electrode film, 7) and the substrate (first electrode film, 7) and between the insulating resin (second insulating film, 12) on the first main surface side (top surface relative to Figure 5C) of the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8) (Figure 5C, [0035-0036]). Thus, all of the limitations of Claim 2 are met.
Regarding Claim 3, Shimoichi further discloses that the insulating film (first insulating film, 11) is at a position where the insulating film (first insulating film, 11) covers at least the insulating resin (second insulating film, 12) on a second main surface side (bottom surface relative to Figure 5C) facing a first main surface (top surface relative to Figure 5C) of the substrate (first electrode film, 7) (Figure 5C, [0035-0036]). Thus, all of the limitations of Claim 3 are met.
Regarding Claim 4, Shimoichi further discloses that the insulating film (first insulating film, 11) is between the insulating resin (second insulating film, 12) which surrounds the electrode portion (second electrode film, 8) and the electrode portion (second electrode film, 8), and is between the insulating resin (second insulating film, 12) which surrounds the electrode portion (second electrode film, 8) and the substrate (first electrode film, 7) (Figure 5C, [0035-0036]). Thus, all of the limitations of Claim 4 are met.
Regarding Claim 5, Shimoichi further discloses a metal film (Ni film) that covers at least a part of the electrode portion (second electrode film, 8) (Figure 5E, [0026, 0037]). Thus, all of the limitations of Claim 5 are met.
Regarding Claim 6, Shimoichi further discloses that the metal film (Ni film) includes Ni (Figure 5E, [0026,0037]). Thus, all of the limitations of Claim 6 are met.
Regarding Claim 8, Shimoichi further discloses that the insulating film (first insulating film, 11) is between the insulating resin (second insulating film, 12) which surrounds the electrode portion (second electrode film, 8) and the electrode portion (second electrode film, 8), and is between the insulating resin (second insulating film, 12) which surrounds the electrode portion (second electrode film, 8) and the substrate (first electrode film, 7) (Figure 5C, [0035-0036]). Thus, all of the limitations of Claim 8 are met.
Regarding Claim 9, Shimoichi further discloses a metal film (Ni film) that covers at least a part of the electrode portion (second electrode film, 8) (Figure 5E, [0026, 0037]). Thus, all of the limitations of Claim 9 are met.
Regarding Claim 10, Shimoichi further discloses a metal film (Ni film) that covers at least a part of the electrode portion (second electrode film, 8) (Figure 5E, [0026, 0037]). Thus, all of the limitations of Claim 10 are met.
Regarding Claim 11, Shimoichi further discloses a metal film (Ni film) that covers at least a part of the electrode portion (second electrode film, 8) (Figure 5E, [0026, 0037]). Thus, all of the limitations of Claim 11 are met.
Regarding Claim 12, Shimoichi further discloses a metal film (Ni film) that covers at least a part of the electrode portion (second electrode film, 8) (Figure 5E, [0026, 0037]). Thus, all of the limitations of Claim 12 are met.
Regarding Claim 18, Shimoichi discloses a manufacturing method of a terminal, the terminal including a substrate (first electrode film, 7) made of metal, an electrode portion (second electrode film, 8) that is configured of a same material as the substrate (first electrode film, 7) and is configured to function as an electrode (Figure 5C, [0024, 0032, 0034-0035]). Shimoichi further discloses an insulating resin (first insulating film, 11) that is between the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8) to surround the electrode portion (second electrode film, 8), and insulates the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8) from each other (Figure 5C, [0035]). Shimoichi further discloses that the manufacturing method comprises: providing a groove (portions of base electrode film removed during etching) for dividing a mother substrate (base electrode film) made of metal into the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8); and disposing the insulating resin (first insulating film, 11) in the groove (portions of base electrode film removed during etching) (Figure 5C, [0035]). Thus, all of the limitations of Claim 18 are met.
Regarding Claim 19, Shimoichi further discloses that before the providing of the groove (portions of base electrode film removed during etching), providing an insulating film (surface insulating film, 6) on a surface (lower surface relative to Figure 5C) of the mother substrate (base electrode film) (Figure 5C, [0032-0035]). Thus, all of the limitations of Claim 19 are met.
Regarding Claim 20, Shimoichi further discloses a step of providing an insulating film (surface insulating film, 6) before the disposing of the insulating resin (first insulating film, 11) (Figure 5C, [0032-0033, 0035]).
The skilled artisan would appreciate that insulating film (surface insulating film, 6) may only be provided on the surface of the groove (portions of base electrode film removed during etching) after the groove (portions of base electrode film removed during etching is provided (i.e., after the groove is provided, the surface insulating film is exposed such that it is provided on what then may be considered the bottom surface of the groove). Thus, all of the limitations of Claim 20 are met.
Regarding Claim 21, Shimoichi further discloses that the electrode portion (second electrode film, 8) is surrounded by the substrate (first electrode film, 7) in a view from a thickness direction, and overlapping the substrate (first electrode film, 7) in a view from a plane direction (see Figure 5C). Shimoichi further discloses that the insulating resin (first insulating film, 11) surrounds the electrode portion (second electrode film, 8) electrically insulates the substrate (first electrode film, 7) and the electrode portion (second electrode film, 8) from each other (Figure 5C, [0035]). Thus, all of the limitations of Claim 21 are met.
Regarding Claim 22, Shimoichi further discloses a metal film (Ni film) that covers at least a part of the electrode portion (second electrode film, 8) (Figure 5E, [0026, 0037]). Thus, all of the limitations of Claim 22 are met.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7, 13, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Shimoichi (JP 2019161170 A) (citations made in reference to the English translation attached to this office action), as applied to Claims 1-2 and 5-6 above, and further in view of Poff (US 2009/0208818 A1).
In Regards to Claim 7 (Dependent Upon Claim 1):
Shimoichi discloses the terminal of Claim 1 as set forth above. Shimoichi further discloses a chip component (1) comprising the terminal (Figures 1 and 5C, [0016, 0032]).
Shimoichi is deficient in disclosing an electronic component package comprising: a sealed container including the terminal according to Claim 1; and an electronic component element that is in the sealed container while being electrically connected to the electrode portion.
Poff discloses an electronic component package (battery package, 100) comprising: a sealed container (casing, 105) including an electronic component element (battery fuel cell gauge, 130) that is in the sealed container (casing, 105) (Figure 1, [0011]). Poff further discloses that the electronic component element (battery fuel cell gauge, 130) may include microcontroller chips (124) which are electrically coupled to battery cells, 120) (Figure 1, [0011]).
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to utilize the chip of Shimoichi, which includes the terminal of Claim 1, as a microcontroller chip in an electronic component package as described by Poff, as such a configuration is known in the art as a suitable use for a chip such as the one described by Shimoichi, as taught by Poff. Furthermore, the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07). Upon the above modification, all of the limitations of Claim 7 are met.
In Regards to Claim 13 (Dependent Upon Claim 2):
Shimoichi discloses the terminal of Claim 2 as set forth above. Shimoichi further discloses a chip component (1) comprising the terminal (Figures 1 and 5C, [0016, 0032]).
Shimoichi is deficient in disclosing an electronic component package comprising: a sealed container including the terminal according to Claim 2; and an electronic component element that is in the sealed container while being electrically connected to the electrode portion.
Poff discloses an electronic component package (battery package, 100) comprising: a sealed container (casing, 105) including an electronic component element (battery fuel cell gauge, 130) that is in the sealed container (casing, 105) (Figure 1, [0011]). Poff further discloses that the electronic component element (battery fuel cell gauge, 130) may include microcontroller chips (124) which are electrically coupled to battery cells, 120) (Figure 1, [0011]).
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to utilize the chip of Shimoichi, which includes the terminal of Claim 2, as a microcontroller chip in an electronic component package as described by Poff, as such a configuration is known in the art as a suitable use for a chip such as the one described by Shimoichi, as taught by Poff. Furthermore, the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07). Upon the above modification, all of the limitations of Claim 13 are met.
In Regards to Claim 16 (Dependent Upon Claim 5):
Shimoichi discloses the terminal of Claim 5 as set forth above. Shimoichi further discloses a chip component (1) comprising the terminal (Figures 1 and 5C, [0016, 0032]).
Shimoichi is deficient in disclosing an electronic component package comprising: a sealed container including the terminal according to Claim 5; and an electronic component element that is in the sealed container while being electrically connected to the electrode portion.
Poff discloses an electronic component package (battery package, 100) comprising: a sealed container (casing, 105) including an electronic component element (battery fuel cell gauge, 130) that is in the sealed container (casing, 105) (Figure 1, [0011]). Poff further discloses that the electronic component element (battery fuel cell gauge, 130) may include microcontroller chips (124) which are electrically coupled to battery cells, 120) (Figure 1, [0011]).
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to utilize the chip of Shimoichi, which includes the terminal of Claim 5, as a microcontroller chip in an electronic component package as described by Poff, as such a configuration is known in the art as a suitable use for a chip such as the one described by Shimoichi, as taught by Poff. Furthermore, the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07). Upon the above modification, all of the limitations of Claim 16 are met.
In Regards to Claim 17 (Dependent Upon Claim 6):
Shimoichi discloses the terminal of Claim 6 as set forth above. Shimoichi further discloses a chip component (1) comprising the terminal (Figures 1 and 5C, [0016, 0032]).
Shimoichi is deficient in disclosing an electronic component package comprising: a sealed container including the terminal according to Claim 6; and an electronic component element that is in the sealed container while being electrically connected to the electrode portion.
Poff discloses an electronic component package (battery package, 100) comprising: a sealed container (casing, 105) including an electronic component element (battery fuel cell gauge, 130) that is in the sealed container (casing, 105) (Figure 1, [0011]). Poff further discloses that the electronic component element (battery fuel cell gauge, 130) may include microcontroller chips (124) which are electrically coupled to battery cells, 120) (Figure 1, [0011]).
Therefore, it would be obvious to one of ordinary skill in the art at the time of the filing of the invention to utilize the chip of Shimoichi, which includes the terminal of Claim 6, as a microcontroller chip in an electronic component package as described by Poff, as such a configuration is known in the art as a suitable use for a chip such as the one described by Shimoichi, as taught by Poff. Furthermore, the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07). Upon the above modification, all of the limitations of Claim 17 are met.
Response to Arguments
Applicant’s arguments, filed 09/18/2025, with respect to the rejection of Claims 1-20 under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Shimoichi (JP 2019161170 A) and Poff (US 2009/0208818 A1).
Conclusion
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/E.E.F./Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724