Prosecution Insights
Last updated: April 18, 2026
Application No. 18/258,143

ULTRA-THIN SOLDERING GASKET AND PREPARATION METHOD THEREFOR, SOLDERING METHOD, AND SEMICONDUCTOR DEVICE

Non-Final OA §102§103§112
Filed
Jun 16, 2023
Examiner
PARENDO, KEVIN A
Art Unit
2896
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Ningbo S J Electronics Co. Ltd.
OA Round
1 (Non-Final)
72%
Grant Probability
Favorable
1-2
OA Rounds
2y 11m
To Grant
84%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
532 granted / 742 resolved
+3.7% vs TC avg
Moderate +12% lift
Without
With
+12.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
43 currently pending
Career history
785
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
47.6%
+7.6% vs TC avg
§102
20.9%
-19.1% vs TC avg
§112
27.0%
-13.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 742 resolved cases

Office Action

§102 §103 §112
DETAILED ACTION Election /Restrictions A restriction requirement was mailed on 1/22/26 Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on 3/22/26 is acknowledged. Claims 10-18 are withdrawn. Foreign Priority Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statement (IDS) submitted on 6/16/23 is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the information disclosure statement has been considered by the examiner. Specification The abstract of the disclosure is objected to because it exceeds the length limit. Correction is required. See MPEP § 608.01(b). 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. Claim(s) 1-9 is/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. Claim 1 recites the limitation “ultra-thin”. The metes and bounds of the claimed limitation can not be determined for the following reasons: The term "ultra-thin" is a relative term that renders the claim indefinite. It is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “ultra-thin” is not defined in the specification, which only contains various examples (e.g. 5, 30, 40, 60, 120, 1000, micrometers, etc.). Thus, determining whether one is infringing the limitation is subjective, rather than objective, and the claim is unclear. Claims 2-9 depend from claim 1 and inherit its deficiencies. Regarding claims 2, 3, 4, 8, and 9 , Claim 2 recites the limitation “ optionally , a thickness of the support sheet is 3-450 micrometers”. Claim 3 recites the limitation “ optionally , a single-layer thickness of the ultra-thin soldering gasket is 10-1000 micrometers”. Claim 4 recites the limitation “ optionally , the material of the internal support structure is one of copper, copper alloy, nickel alloy, iron alloy, iron-nickel alloy, iron-nickel-cobalt alloy and stainless steel.” Claim 8 recites the limitation “ optionally , the support sheet or the support structure is a mesh support sheet woven from metal wires of different diameters or woven from metal wires of different diameters and spherical structures”. Claim 9 recites the limitation “ optionally , the solder is selected from one of tin, a tin-based solder, indium, an indium-based solder, gallium, a gallium-based solder, a tin-bismuth solder, a tin-indium solder and other soldering materials”. The metes and bounds of the claimed limitation s can not be determined for the following reasons: The term “optionally” makes it unclear whether or not the limitations following “optionally” are required by the claims. It makes it unclear who determines when the limitations are “optional”, e.g. the patent owner or a possible infringer. MPEP 2173.05(h)(I) and (II) state that when a “list of potential alternatives” uses the term “optionally” the language may be clear or not. However, in each of the claims at issue, there is no list of items such as “comprising element a, element b, and optionally element C”. Thus, these sections do not help much. Rather, the use of “optionally” in these claims appears more as an “example”. For example, claim 2 first states that there is a support sheet, and then the claim’s “optionally…” limitation gives a range of thicknesses of that support sheet, much like an example. MPEP 2173.05(d) discusses exemplary claim language “for example”, and states that in multiple instances it is unclear. In the instances in the claims at issue, the “optional” limitations make it unclear if the limitations are truly required of the claims or if they are merely providing examples. Claims 5-8 depend from claim 2 and inherit its deficiencies. Claim Interpretation The Office will use the following interpretations : the limitation “ultra-thin” will be interpreted to read only on the encompassed range of thicknesses disclosed in examples in the specification: 5 – 1000 micrometers; the limitations “optionally, X …” will be interpreted such that X is not required by the claim. The applicant is hereby notified that the examiner is treating claim s 1-9 as "product-by-process” claim s . 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.” (See In re Thorpe , 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), and also see MPEP 2113). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. (See, e.g., In re Garnero , 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) and also see MPEP 2113). Claim 1 is directed to a product/device (i.e. an ultra-thin soldering gasket), but it recites the process limitation “ the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure .” The process of forming a solder layer by “uniformly coating a solder liquid to the surface of the internal support structure” does not result in any distinct structural characteristic to the solder layer, because while it requires uniformly coating a solder liquid to the surface of the internal support structure, it does not require what the liquid does after that uniformly coating, so it could move anywhere and have any geometry. The liquid solder could be uniform or non-uniform in the final device. Thus, the limitation “wherein the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure, and the solder layer has a lower melting point than the internal support structure” will be treated as “wherein the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure, and the solder layer has a lower melting point than the internal support structure”. Claim 6 i s directed to a product/device (i.e. an ultra-thin soldering gasket), but it recites the process limitation “ the perforated support sheet is formed by opening holes on an imperforate support sheet. ” The process of forming “opening” [i.e. forming] holes on an imperforate support sheet does not result in any distinct structural characteristic to the sheet , because the claim does not specify any limitation on the geometry (size, shape) or distribution of the holes or of the sheet overall. Thus, the limitation “ wherein the support sheet is a perforated support sheet, and the perforated support sheet is formed by opening holes on an imperforate support sheet ” will be treated as “ wherein the support sheet is a perforated support sheet , and the perforated support sheet is formed by opening holes on an imperforate support sheet . ” Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See In re Marosi , 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983)). Also note the use of 102/103 rejections for product-by-process claims has been approved by the courts. (See In re Brown , 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972), and also see MPEP 2113). Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102, some of which form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention. (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) 1-4, 6, and 8-9 is/are rejected under 35 U.S.C. 102 (a)(1) and 102(a)(2) as being anticipated by CN 107486651 (hereinafter “Wang”) (see copy thereof provided by the Applicant on 6/16/23; reference will hereinafter be made to the machine-generated English translation thereof provided by the Office on 1/22/26). Wang teaches: 1. An ultra-thin soldering gasket (see e.g. “foamed metal composite solder piece” having a “foam metal skeleton”, see e.g. “BACKGROUND OF THE INVENTION”) , comprising an internal support structure (“metal skeleton”, see e.g. “SUMMARY OF THE INVENTION” section 1) and a solder layer (“low melting point solder metal”, see e.g. “SUMMARY OF THE INVENTION” section 2) which covers the surface of the internal support structure (see e.g. “completely filled with a low-melting-point solder metal… “SUMMARY OF THE INVENTION” section 2) , wherein the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure (see claim interpretation, above; also see e.g. “immersing the treated foam metal skeleton into a molten solder metal”, “SUMMARY OF THE INVENTION” section 2) , and the solder layer has a lower melting point than the internal support structure (the solder has a “low-melting point” and is molten at the time when the metal skeleton is immersed therein, hence the solder has a lower melting point than the metal skeleton, which does not melt during the immersion) . 2. The ultra-thin soldering gasket according to claim 1, wherein the internal support structure is a flat support sheet (see “flat”, “flat-plate”, “solder sheet” throughout; see e.g. second embodiment) ; optionally, a thickness of the support sheet is 3-450 micrometers (this is not required by the claim, see claim interpretation section, above; in any case, see embodiment 3, wherein the foamed nickel internal support structure is 0.2 mm initially, and is later 120 micrometers after being further flattened by rolling) . 3. The ultra-thin soldering gasket according to claim 1 , wherein the ultra-thin soldering gasket has a flat structure (see “flat”, “flat-plate”, “solder sheet” throughout; see e.g. second embodiment) ; optionally, a single-layer thickness of the ultra-thin soldering gasket is 10-1000 micrometers (this is not required by the claim, see claim interpretation section, above; in any case, see embodiment 3, wherein the foamed nickel internal support structure is 0.2 mm initially, and is later 120 micrometers after being further flattened by rolling) . 4. The ultra-thin soldering gasket according to claim 1, wherein a material of the internal support structure is metal (see e.g. copper, embodiment 1; nickel, embodiment 3) ; optionally, the material of the internal support structure is one of copper, copper alloy, nickel alloy, iron alloy, iron-nickel alloy, iron-nickel-cobalt alloy and stainless steel (this is not required by the claim, see claim interpretation section, above; in any case, see e mbodiment 1 for copper and embodiments 2-3 for nickel) . 6. The ultra-thin soldering gasket according to claim 2, wherein the support sheet is a perforated support sheet, and the perforated support sheet is formed by opening holes on an imperforate support sheet (see claimed interpretation section above; see “foamed metal” and “foam metal matrix”, having “pores”) . 8. The ultra-thin soldering gasket according to claim 2, wherein the support sheet is a mesh support sheet or a continuous support structure (see “foamed metal” and “foam metal matrix”, having “pores”) ; optionally, the support sheet or the support structure is a mesh support sheet woven from metal wires of different diameters or woven from metal wires of different diameters and spherical structures (this is not required by the claim, see claim interpretation section, above ) . 9. The ultra-thin soldering gasket according to claim 1, wherein a solder of the solder layer is a solderable material (see e.g. “low-melting-point solder material”) ; optionally, the solder is selected from one of tin, a tin-based solder, indium, an indium- based solder, gallium, a gallium-based solder, a tin-bismuth solder, a tin-indium solder and other soldering materials (this is not required by the claim, see claim interpretation section, above ; in any case, see many instances reading hereon, such as “Sn-Bi alloy”, etc. ) . Claim Rejections - 35 USC § 103 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 of this title, 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. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of US 2020/0139490 A1 (“Strogies”). Re claim 5, Wang teaches claim 2, as discussed above, but does not explicitly teach wherein the support sheet is an imperforate support sheet. Strogies teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Wang wherein the support sheet is an imperforate support sheet (see e.g. Fig. 1 and e.g. para 9-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Strogies to the invention of Wang. The motivation to do so is that the combination produces the predictable results of forming a solder preform by applying metal particles in a paste onto a metal foil by e.g. screen printing (see e.g. para 25), the metal foils being large and able to be cut into the desired size by e.g. stamping or laser cutting (see e.g. para 26). Applicant has not disclosed that the claimed shape (“imperforate” shape) is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical. ( See Applicant’s specification, e.g. para 14-17, 50, etc., wherein the support sheet can be perforated or imperforate, could be any metal, could be a mesh, etc. ) It has been found that mere changes in the shape of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See MPEP 2144.04(IV)(B), In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range. Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of US 2002/0197530 A1 (“Tani”). Wang teaches claim 6, as discussed above, and further teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention a shape of the hole is a triangle, a square, a rectangle, a hexagon or an irregular shape (pores in a foam are irregularly shaped) . However, Wang does not explicitly teach wherein a hole diameter of the hole is less than 200 micrometers . Tani teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Wang wherein a hole diameter of the hole is less than 200 micrometers (see e.g. para 196). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Tani to the invention of Wang. The motivation to do so is that the combination produces the predictable results of using the foamed nickel material (one example used by Wang) of a known density to have an average pore size of 100 micrometers (see e.g. para 196). Applicant has not disclosed that the claimed shape is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical. ( See Applicant’s specification, e.g. para 14-17, 50, etc., wherein the support sheet can be perforated or imperforate, could be any metal, could be a mesh, etc. ) It has been found that mere changes in the shape of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See MPEP 2144.04(IV)(B), In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range. Applicant has not disclosed that the claimed size is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical ( See Applicant’s specification, e.g. para 14-17, 50, etc., wherein the support sheet can be perforated or imperforate, could be any metal, could be a mesh, etc. , so pores are not even necessary ) . It has been found that mere changes in the size of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See e.g. MPEP 2144.04; in re Rose, F.3d 459, 105 USPQ 237 (CCPA 1955); in re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984); To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range. See e.g. MPEP 716.02(b); In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980) . Conclusion Conclusion / Prior Art The prior art made of record, because it is considered pertinent to applicant's disclosure, but which is not relied upon specifically in the rejections above, is listed on the Notice of References Cited. Conclusion / Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Parendo who can be contacted by phone at (571) 270-5030 or by direct fax at (571) 270-6030. The examiner can normally be reached Monday-Friday from 9 am to 4 pm ET. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Billy Kraig, can be reached at (571) 272-8660. The fax number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Kevin Parendo/ Primary Examiner, Art Unit 2896
Read full office action

Prosecution Timeline

Jun 16, 2023
Application Filed
Apr 01, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
72%
Grant Probability
84%
With Interview (+12.1%)
2y 11m
Median Time to Grant
Low
PTA Risk
Based on 742 resolved cases by this examiner. Grant probability derived from career allow rate.

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