Prosecution Insights
Last updated: April 19, 2026
Application No. 18/274,056

ELECTRONIC ELEMENT MOUNTING SUBSTRATE

Non-Final OA §102§103§112
Filed
Jul 25, 2023
Examiner
ARORA, AJAY
Art Unit
2892
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Kyocera Corporation
OA Round
1 (Non-Final)
84%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
90%
With Interview

Examiner Intelligence

Grants 84% — above average
84%
Career Allow Rate
749 granted / 888 resolved
+16.3% vs TC avg
Moderate +6% lift
Without
With
+5.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
27 currently pending
Career history
915
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
55.5%
+15.5% vs TC avg
§102
23.8%
-16.2% vs TC avg
§112
14.6%
-25.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 888 resolved cases

Office Action

§102 §103 §112
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 . Specification The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following title is suggested: ELECTRONIC ELEMENT MOUNTING SUBSTRATE COMPRISING METAL FILM WITH VARYING THICKNESS 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. Claims 1-11 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 “thickness” but does not provide a reference for direction in which “thickness” is measured, and as such, it is not clear how to measure thickness, For the purpose of this office action, thickness may be measured in any direction. If applicant wishes to define the direction of thickness, it may be done by, for example, by replacing “an upper surface” with “an upper surface extending in an x-y plane” and further defining thickness by “wherein thickness is measured in a direction normal to the x-y plane” Claim 2 recites “plan view of the substrate” but does not provide a reference to determine what view constitutes a “plan view” as that can change depending on which direction the object is viewed from. For the purposes of this office action, it will be assumed that plan view can be in any direction. If applicant wishes to further define “plan view” (also refer to suggestions for claim 1 above), the limitation “plan view of the substrate” may be replace by “a plan view of the substrate, wherein the plan view is when viewing in a direction normal to the x-y plane”. 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. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that 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. Claim 1, 3, 4 and 7 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Matsumoto (US 2020/0058517), hereinafter Matsumoto. Regarding claim 1, Matsumoto (US 2020/0058517) teaches (refer to Figures 1-3 and to markup of detail of Figure 2A provided below) an electronic element mounting substrate comprising: a substrate (comprising 1 – see Figure 1 and para 36) comprising a mounting region (labelled R1 in markup of Figure 2A) on which an electronic element (4, described as “semiconductor elements 4” in para 36, see markup of Figure 2A, also see Figure 1) is to be mounted on an upper surface; and a first metal film (3, labelled “First metal film” in markup of Figure 2A; see para 43) located in the mounting region (i.e. region of 1 where 4 is mounted), wherein the first metal film (3) comprises a first region (R1 in markup of Figure 2A) comprising a center portion of the first metal film (i.e. portion of 3 where 4 is mounted) and a second region (R2 in markup of Figure 2A) located in at least a part of a periphery (see markup of Figure 2A) of the first region, and the second region comprises a thick film portion in which a film thickness of the second region (T-SR-1 or T-SR-2 in markup of Figure 2A) is greater than (see markup of Figure 2A) a film thickness of the first region (T-FR in markup of Figure 2A). PNG media_image1.png 304 562 media_image1.png Greyscale Regarding claim 3, Matsumoto (refer to Figures 1-3 and markup of Figure 2A) teaches the electronic element mounting substrate according to claim 1, wherein the first metal film (3) comprises the thick film portion on both outer sides of the first region (R1 in markup of Figure 2A) with respect to the first region in a cross-sectional view in a film thickness direction of the substrate (best seen in Figure 1 and comparing it to detail of Figure 2). Regarding claim 4, Matsumoto (refer to Figures 1-3 and markup of Figure 2A) teaches the electronic element mounting substrate according to claim 1, wherein the thick film portion comprises a portion where a film thickness continuously increases (i.e. increases from T-SR-1 to T-SR-2, see markup of Figure 2A). Regarding claim 7, Matsumoto (refer to Figures 1-3 and markup of Figure 2A) teaches the electronic element mounting substrate according to claim 1, further comprising a metallized layer (2, described as “plate electrode 2” which may be “Cu” – see para 36) wherein at least a part of the metallized layer is covered with (best seen in Figure 1) the first metal film (3). Claim 1-2 and 5-6 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Funahashi (US 20180218974), hereinafter Funahashi. Regarding claims 1-2, Funahashi (US 20180218974) (refer to Figures 1A-5B and 11A-12, see para 19) teaches an electronic element mounting substrate comprising: a substrate (1, see para 19; best seen in Figure 2B or it’s markup provided below) comprising a mounting region on which an electronic element (10, described as “electronic device 10” in para 19) is to be mounted on an upper surface; and a first metal film (4, para 20; also see para 26 that discloses metal material) located in the mounting region, wherein the first metal film comprises a first region (4d, as seen in Figure 2B and it’s markup below, 4d overlaps with 10; see para 20) comprising a center portion of the first metal film and a second region (4c, para 20, best seen in Figure 2B) located in at least a part of a periphery of the first region, and the second region comprises a thick film portion in which a film thickness of the second region is greater than a film thickness of the first region (para 20, especially last sentence); and wherein (as recited in claim 2) in the thick film portion, a thickness of the thick film portion (see part of 4c closest to peripheral part of 4d – best seen in Figure 2B) monotonically decreases in a direction from a peak thickness portion having a maximum thickness toward an inner side of the first metal film in a plan view of the substrate. PNG media_image2.png 528 758 media_image2.png Greyscale Regarding claim 5, Funahashi (refer to Figures 1A-5B and 11A-12, see para 19) teaches the electronic element mounting substrate according to claim 1, wherein, in a cross-sectional view in a film thickness direction of the substrate, the first region (4d) comprises an inclined portion (labelled 4d-1 in markup of Figure 2B) in which a film thickness of the first region (4d) decreases as a distance from the thick film portion (4c) increases (also see para 20, especially last sentence). Regarding claim 6, Funahashi (refer to Figures 1A-5B and 11A-12, see para 19) teaches the electronic element mounting substrate according to claim 1, wherein the first region (4d) comprises a portion where a film thickness of the first metal film (4) is smallest (see Figure 2B and compare thickness of 4 in regions 4c vs regions 4d, also see para 20, especially last sentence) 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. 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 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Funahashi . Regarding claim 8, Funahashi (refer to Figures 1A-5B and 11A-12, see para 19) teaches the electronic element mounting substrate according to claim 1, but does not teach that a maximum value of a film thickness of the thick film portion is “from 0.06 μm to 3.30 μm”. However, Funahashi teaches that the thicker a metal layer, the greater is the electrical conductivity (para 62). Given that film thickness and it’s maximum value is a known results effective variable and its dependence on electrical conductivity is also known (as explained above), varying the maximum value of a film thickness of the thick film portion would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing of the claimed invention to modify Funahashi so that that a maximum value of a film thickness of the thick film portion is within a desired range, such as “from 0.06 μm to 3.30 μm”. The ordinary artisan would have been motivated to modify Funahashi at least for the purpose of achieving target conductivity for the thick film for the given material. Regarding claim 9, Funahashi (refer to Figures 1A-5B and 11A-12, see para 19) teaches the electronic element mounting substrate according to claim 1, wherein the first metal film comprises: a nickel coating containing nickel as a main component (para 29); and a gold coating provided covering at least a part of the nickel coating (para 29), the gold coating containing gold as a main component (para 29), but does not teach that “a maximum value of a film thickness of the gold coating in the thick film portion is from 0.03 μm to 0.30 μm”. However, Funahashi teaches that the nickel coating and gold coating increases resistance to oxidation and improves electrical connections (para 20); and it is known in the art that resistance to oxidation in such as case depends on coating thickness for a given material; i.e. thicker the coating thickness, higher the resistance to oxidation. Given that film thickness and it’s maximum value is a known results effective variable and its dependence on electrical conductivity is also known (as explained above), varying the maximum value of a film thickness of the thick film portion would not be cause for undue experimentation. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) see MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing of the claimed invention to modify Funahashi so that that a maximum value of a film thickness of the gold coating in the thick film portion is within a desired range, such as “from 0.03 μm to 0.30 μm”. The ordinary artisan would have been motivated to modify Funahashi at least for the purpose of achieving target resistance to oxidation for the thick film. Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto in view of Fitzsimmons (US 20050112861), hereinafter Fitzsimmons. Regarding claims 10-11, Matsumoto (refer to Figures 1-3 and markup of Figure 2A) teaches the electronic element mounting substrate according to claim 1, but does not teach comprising “a second metal film located on a surface of the substrate, wherein the second metal film comprises a surface inclined with respect to the surface of the substrate” (as recited in claim 10), and further wherein (as recited in claim 11) “a thickness of the second metal film monotonically decreases in a direction identical to a direction from a peak thickness portion of the thick film portion having a maximum thickness in the thick film portion toward an inner side of the first metal film in a plan view of the substrate”. Fitzsimmons (US 20050112861) teaches an electronic mounting substrate (12, see para 40) may further comprise an additional metal film that forms a bond pad (55’ and 200 of Figure 2B, which is similar to 55 of Figure 1; see para 46 and para 41) for a bond wire (50 or 50’), wherein the additional metal film is located on a surface of the substrate (12, se Figure 1), wherein the additional metal film (55’ and 200 of Figure 2B) comprises a surface (see surface of 200 inclined with respect to the horizontal in orientation of Figure 1 and 2B) inclined with respect to the surface of the substrate, wherein (as recited in claim 11) in the additional metal film, a thickness of the second metal film monotonically decreases along the horizontal direction (in orientation of Figure 1) both going from left to right (in orientation of Figure 1) as well as going right to left (again in orientation of Figure 1) because of conical shape of 200. As such, it follows that a thickness of the additional metal film (200) monotonically decreases in a direction identical to a direction from a peak thickness portion of the thick film portion having a maximum thickness in the thick film portion toward an inner side of the first metal film in a plan view of the substrate. It would have been obvious to one of ordinary skills in the art at the time of the effective filing of the claimed invention to modify Matsumoto to include an additional metal film as a wire bonding pad such as “a second metal film” that is “located on a surface of the substrate, wherein the second metal film comprises a surface inclined with respect to the surface of the substrate” (as recited in claim 10), and further wherein (as recited in claim 11) “a thickness of the second metal film monotonically decreases in a direction identical to a direction from a peak thickness portion of the thick film portion having a maximum thickness in the thick film portion toward an inner side of the first metal film in a plan view of the substrate”. The ordinary artisan would have been motivated to modify Matsumoto for at least the purpose of creating a structure for wire bonding that avoids creating any excessive force and power applied during the formation of the wire bond such that any distortion, stress, and/or cracking of the bonding pad and/or underlying substrate material is avoided (see para 10 of Fitzsimmons). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJAY ARORA whose telephone number is (571)272-8347. The examiner can normally be reached 9 AM - 5 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Drew Richards can be reached at 5712721736. The fax phone 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. /AJAY ARORA/Primary Examiner, Art Unit 2892
Read full office action

Prosecution Timeline

Jul 25, 2023
Application Filed
Dec 15, 2025
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
84%
Grant Probability
90%
With Interview (+5.7%)
2y 8m
Median Time to Grant
Low
PTA Risk
Based on 888 resolved cases by this examiner. Grant probability derived from career allow rate.

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