DETAILED ACTION
This Office Action is responsive to the Applicant’s communication filed 20 October 2025. In view of this communication, claims 1-20 are pending in the application.
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 .
Response to Arguments
Applicant’s arguments, see the Remarks, filed 20 October 2025, with respect to the rejection(s) of claim(s) 1-8 and 10-18 under 35 USC 102(a)(2) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Chou et al.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 7, and 18 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chou (US 20160055403 A1), hereinafter referred to as Chou.
Regarding claim 1, Chou teaches a substrate, comprising: a metallic surface (fig 2A, 21); a barcode (212) etched into the metallic surface (para 0028); and a wall of non-metallic material (23) formed on the metallic surface (21) and framing the barcode (212) (Figs. 2C and 3; paragraphs 33 and 35: the barcode 212 is etched into metal layer 21 and is surrounded by insulating layer 23. For the purposes of this rejection, the phrase “laser etched” is not given patentable weight because the method of forming a device is not germane to the issues of patentability of the device itself. Aditionally, Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) and since there is no evidence that laser etching the bar code provides any special enhancement of the product as opposed to etching the metal layer, laser etching is not given patentable weight).
Regarding claim 2, Chou teaches the substrate of claim 1, further comprising: an electrically insulative body (20), wherein the metallic surface (21) covers the electrically insulative body (20) (Fig. 2C and paragraph 27: the metallic layer 21 is formed on the substrate 20).
Regarding claim 7, Chou teaches the substrate of claim 1, wherein the metallic surface (21) is patterned into a plurality of islands (211, 212), wherein the barcode (212) is laser etched into one of the islands (212), and wherein the wall (23) of non-metallic material is formed on the same island (212) as the barcode (212) (Fig. 2C, paragraph 35: there are multiple exposed sections of the metallic surface 21, in one section of which a barcode 212 is etched and surrounded by the non-metallic material 23).
Regarding claim 18, Chou teaches a substrate, comprising: an electrically insulative body (20); a metallic layer (21) covering the electrically insulative body (20); a barcode (212) laser etched into the metallic layer (21); and a trench formed in the metallic layer (21) along a perimeter of the barcode (212) and exposing the electrically insulative body (20) (Figs. 2C and 3: the barcode 212 comprises an empty space between the metallic pattern and the insulating wall 23).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Obeng et al. (US 2015/0363682 A1), hereinafter referred to as Obeng et al.
Regarding claim 3, Chou teaches the substrate of claim 2, wherein the metallic surface (21) comprises a copper layer bonded to the electrically insulative body (20), and wherein the wall of non-metallic material (23) is formed on the copper layer (21) (see Fig. 2C and paragraphs 31-32: the metallic layer 21 may be copper which is deposited on the insulating layer 20).
Chou does not teach that the electrically insulative body is ceramic. Obeng et al. does teach that the electrically insulative body is ceramic (Obeng et al. paragraph 34: the substrate may be ceramic).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou from a ceramic as taught by Obeng et al. because Obeng et al. teaches that ceramics are known in the art as a substrate material and 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, 125 USPQ 416.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Dankowski et al. (US 20200243456 A1), hereinafter referred to as Dankowski et al.
Regarding claim 4, Chou teaches the substrate of claim 1, wherein the wall of non-metallic material (23) is formed on the surface of the substrate (20), but does not teach that the substrate is a lead frame, wherein the metallic surface is a surface of the lead frame, and wherein the wall of non-metallic material is formed on the surface of the lead frame.
Dankowski et al. does teach that the substrate is a lead frame (106), wherein the metallic surface is a surface of the lead frame (106), such that the wall of non-metallic material is formed on the surface of the lead frame (Dankowski et al. paragraph 17: the carrier is provided by a lead frame 106 and paragraph 22: the bar code 122 is formed in the lead frame 106).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou as a lead frame as taught by Dankowski et al. because Dankowski et al. teaches that lead frames are well known in the art for substrates and 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, 125 USPQ 416.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Gaulin et al. (US 20210175149 A1), hereinafter referred to as Gaulin et al.
Regarding claim 5, Chou teaches the substrate of claim 1, but does not teach that the substrate is a metallic baseplate, wherein the metallic surface is a surface of the metallic baseplate, and wherein the wall of non-metallic material is formed on the surface of the metallic baseplate.
Gaulin et al. does teach that the substrate is a metallic baseplate, wherein the metallic surface is a surface of the metallic baseplate, and wherein the wall of non-metallic material is formed on the surface of the metallic baseplate (Gaulin et al. paragraph 37: the substrate 543 of circuit board 540 is a metallic baseplate).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou as a metallic baseplate as taught by Gaulin et al. because Gaulin et al. teaches that the metallic baseplates are well known in the art for substrates and 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, 125 USPQ 416.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Widhalm (US 20130188296 A1), hereinafter referred to as Widhalm.
Regarding claim 6, Chou teaches the substrate of claim 10, wherein the wall of non-metallic material is formed on the surface of the substrate (Fig. 3), but does not teach that the substrate is a metallic terminal or busbar, wherein the metallic surface is a surface of the metallic terminal or busbar.
Widhalm does teach that the substrate is a metallic terminal or busbar, wherein the metallic surface is a surface of the metallic terminal or busbar (Widhalm paragraph 40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou from a busbar as taught by Widhalm because Widhalm teaches that busbars are well known in the art for substrates and 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, 125 USPQ 416.
Claim(s) 8, 10-11, 16-17, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Begelfer et al. (US 4915994 A), hereinafter referred to as Begelfer et al.
Regarding claim 8, Chou teaches the substrate of claim 1, but does not teach that the wall of non-metallic material comprises polyimide.
Begelfer et al. does teach that the wall of non-metallic material may comprise polyimide (Begelfer et al. column 4, lines 30-35: the polymer may include any polymer with an imide group).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the wall (23) of Chou from polyimide as taught by Begelfer et al. because polyimide is known in the art as a polymer material and 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, 125 USPQ 416.
Regarding claim 10, Chou teaches a substrate, comprising: a metallic surface (21); a barcode (212) laser etched into the metallic surface (21) (Figs. 2C and 3; paragraphs 33 and 35: the barcode 212 is etched into metal layer 21 and is surrounded by insulating layer 23). Chou does not teach an optically transparent encapsulant covering a region of the metallic surface that includes the barcode, wherein the optically transparent encapsulant reduces oxidation of metallic debris produced by laser etching of the barcode and that remains on or near the barcode.
Begelfer et al. does teach an optically transparent encapsulant (42) covering a region of the metallic surface that includes the barcode (32), wherein the optically transparent encapsulant (42) reduces oxidation of metallic debris produced by laser etching of the barcode (32) and that remains on or near the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the readable code 32 is covered by an optically transparent film material 44).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cover the substrate of Chou with an optically transparent film as taught by Begelfer et al. because the optically transparent film of Begelfer et al. renders the substrate dimensionally stable in high-temperature environments (Begelfer et al. column 4, lines 44-50) and protects it from damage from the outside environment.
Regarding claim 11, Chou in view of Begelfer et al. teaches the substrate of claim 10, further comprising an electrically insulative body (20), wherein the metallic surface (21) covers the electrically insulative body (20) (Fig. 2C and paragraph 27: the metallic layer is formed on the substrate 20).
Regarding claim 16, Chou in view of Begelfer et al. teaches the substrate of claim 10, wherein the metallic surface (21) is patterned into a plurality of islands (211, 212), wherein the barcode (212) is laser etched into one of the islands (212) (Fig. 2C, paragraph 35: there are multiple exposed sections of the metallic surface 21, in one section of which a barcode 212 is etched and surrounded by the non-metallic material 23), and wherein the optically transparent encapsulant covers a region of the island that includes the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the readable code 32 is covered by an optically transparent film material 44).
Regarding claim 17, Chou in view of Begelfer et al. teaches the substrate of claim 10, wherein the optically transparent encapsulant comprises polyimide (Begelfer et al. column 4, lines 30-35: the polymer may include any polymer with an imide group).
Regarding claim 21, Chou teaches the substrate of claim 18, but does not teach an optically transparent encapsulant covering a region of the metallic layer that includes the barcode, wherein the optically transparent encapsulant reduces oxidation of metallic debris produced by laser etching of the barcode and that remains on or near the barcode.
Begelfer et al. does teach an optically transparent encapsulant (42) covering a region of the metallic surface that includes the barcode (32), wherein the optically transparent encapsulant (42) reduces oxidation of metallic debris produced by laser etching of the barcode (32) and that remains on or near the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the readable code 32 is covered by an optically transparent film material 44).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cover the substrate of Chou with an optically transparent film as taught by Begelfer et al. because the optically transparent film of Begelfer et al. renders the substrate dimensionally stable in high-temperature environments (Begelfer et al. column 4, lines 44-50) and protects it from damage from the outside environment.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Begelfer et al., in further view of Obeng et al.
Regarding claim 12, Chou in view of Begelfer et al. teaches the substrate of claim 11, wherein the metallic surface (21) comprises a copper layer bonded to the electrically insulative body (20) (see Fig. 2C and paragraphs 31-32: metallic layer 21 is copper and is deposited on the insulating layer 20) and that the optically transparent encapsulant covers a region of the copper layer that includes the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the readable code 32 is covered by an optically transparent film material 44).
Chou in view of Begelfer et al. does not teach that the electrically insulative body is ceramic. Obeng et al. does teach that the electrically insulative body is ceramic (Obeng et al. paragraph 34: the substrate may be ceramic).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou in view of Begelfer et al. from a ceramic as taught by Obeng et al. because Obeng et al. teaches that ceramics are known in the art as a substrate material and 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, 125 USPQ 416.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Begelfer et al. in further view of Dankowski et al.
Regarding claim 13, Chou teaches the substrate of claim 10, wherein the optically transparent encapsulant covers a region of the surface of the substrate that includes the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the code 32 is covered by an optically transparent film material 44), but does not teach that the substrate is a lead frame, wherein the metallic surface is a surface of the lead frame, and wherein the wall of non-metallic material is formed on the surface of the lead frame.
Dankowski et al. does teach that the substrate is a lead frame (106), wherein the metallic surface is a surface of the lead frame (106) (Dankowski et al. paragraph 17: the carrier is provided by a lead frame 106 and paragraph 22: the bar code 122 is formed in the lead frame 106).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou in view of Begelfer et al. as a lead frame as taught by Dankowski et al. because Dankowski et al. teaches that lead frames are well known in the art for substrates and 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, 125 USPQ 416.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Begelfer et al. in further view of Gaulin et al.
Regarding claim 14, Chou in view of Begelfer et al. teaches the substrate of claim 10, wherein the optically transparent encapsulant covers a region of the surface of the substrate that includes the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the code 32 is covered by an optically transparent film material 44), but does not teach that the substrate is a metallic baseplate, wherein the metallic surface is a surface of the metallic baseplate.
Gaulin et al. does teach that the substrate is a metallic baseplate, wherein the metallic surface is a surface of the metallic baseplate (Gaulin et al. paragraph 37: the substrate 543 of circuit board 540 is a metallic baseplate).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou as a metallic baseplate as taught by Gaulin et al. because Gaulin et al. teaches that the metallic baseplates are well known in the art for substrates and 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, 125 USPQ 416.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chou in view of Begelfer et al. in further view of Widhalm.
Regarding claim 15, Chou in view of Begelfer et al. teaches the substrate of claim 10, wherein the optically transparent encapsulant covers a region of the surface of the metallic terminal or busbar that includes the barcode (Begelfer et al. Fig. 3 and column 4, lines 15 and 34-35: the code 32 is covered by an optically transparent film material 44), but does not teach that the substrate is a metallic terminal or busbar, wherein the metallic surface is a surface of the metallic terminal or busbar.
Widhalm does teach that the substrate is a metallic terminal or busbar, wherein the metallic surface is a surface of the metallic terminal or busbar (Widhalm paragraph 40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the substrate of Chou in view of Begelfer et al. from a busbar as taught by Widhalm because Widhalm teaches that busbars are well known in the art for substrates and 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, 125 USPQ 416.
Allowable Subject Matter
Claims 9 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 9, the prior art of record, taken alone or in combination, fails to teach or fairly suggest, in combining with other limitations recited in the claim that metallic debris produced by laser etching of the barcode is disposed on the wall of non-metallic material.
Regarding claim 19, the prior art of record, taken alone or in combination, fails to teach or fairly suggest, in combining with other limitations recited in the claim that the region of the island with the barcode is electrically connected to the remainder of the island through one or more gaps in the trench filled by the metallic layer.
Regarding claim 20, the prior art of record, taken alone or in combination, fails to teach or fairly suggest, in combining with other limitations recited in the claim that metallic debris produced by laser etching of the barcode is disposed in the trench.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John B Freal whose telephone number is (571)272-4056. The examiner can normally be reached Mon-Fri 7:00-3:00.
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/JOHN B FREAL/Examiner, Art Unit 2847
/TIMOTHY J THOMPSON/Supervisory Patent Examiner, Art Unit 2847