DETAILED ACTION
This Office action is in response to the Request for Continued Examination (RCE) and the Amendment filed on 10 June 2026. Claims 1-8 and 10 are pending in the application. Claims 5, 6, and 9 has been cancelled. Claim 10 is newly submitted.
This application is a US national stage application under 35 USC 371 of PCT/JP2022/003599, filed on 31 January 2022.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 June 2026 has been entered.
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.
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, 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.
Claims 1, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiya et al., US 2014/0020796, of record, in view of Sumi et al., US 2019/0345594, both of record.
With respect to claim 1, Sekiya et al. disclose an Al bonding wire containing equal to or larger than 0.01 mass% and smaller than 0.8 mass% of one or more of Sc, Zr, and Mg in total,
wherein a concentration of Si contained in the bonding wire is equal to or larger than 0 mass ppm and equal to smaller than 755 mass ppm (0.0755 mass %), see paragraph [0017] and Table 1,
wherein as a result of measuring a crystal orientation on a cross-section parallel to a wire axis direction including a wire axis of the bonding wire, an orientation ratio of a <100> crystal orientation angled at 15 degrees or less to the wire axis direction is equal to or higher than 30% and equal to or lower than 90%, see paragraph [0065] and Table 2.
Sekiya et al. lack anticipation only of the bonding wire containing a concentration of Sc equal to or larger than 0.01 mass % or equal to or less than 0.8 mass%. In the same field of endeavor, Sumi et al. disclose Sc in an amount of 0 to 0.50 mass% (see the Abstract and paragraph [0037]) is a component in an Al bonding wire derived from the aluminum raw material or added as necessary. Scandium suppresses the coarsening of crystal grains in the bonding wire and contributes to the improvement of its strength, see paragraph [0042]. Therefore, in light of the benefits of including Sc in an Al bonding wire, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Sc in the known bonding wire of Sekiya et al., wherein a concentration of Sc contained in the bonding wire is equal to or larger than 0.01 mass% and smaller than 0.8 mass%, in order to suppress the coarsening of crystal grains in the bonding wire and improve its strength.
With respect to claim 8, in the Al bonding wire of Sekiya et al. comprises equal to or larger than 0.01 mass% and equal to or smaller than 0.19 mass% of Mg, see paragraph [0017] and Table 1.
The preamble of claim 1 recites an Al bonding wire “for semiconductor devices”. When reading the preamble in the context of the entire claim, the recitation “for semiconductor devices” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
With respect to newly-submitted independent claim 10, Sekiya et al. disclose an Al bonding wire for semiconductor devices consisting of Al, an alloy element and impurities, wherein the alloy element contained in the bonding wire is one or more selected from Sc, Zr, Mg, Pd, Pt, Ni, Fe and Si, wherein a total amount of Sc, Zr, and Mg contained in the bonding wire is equal to or larger than 0.01 mass% and smaller than 0.8 mass%, see paragraph [0017] and Table 1,
wherein a total amount of Pd and Pt contained in the bonding wire is equal to or larger than 0 mass ppm and equal to or smaller than 500 mass ppm (In the bonding wire of Sekiya, this is equal to 0.),
wherein a total amount of Ni contained in the bonding wire is equal to or larger than 0 mass ppm and equal to or smaller than 100 mass ppm(In the bonding wire of Sekiya, this is equal to 0.),
wherein a total amount of Fe and Si contained in the bonding wire is equal to or larger than 0 mass ppm and equal to or smaller than 750 mass ppm (0.0755 mass%, see paragraph [0017]) (In the bonding wire of Sekiya, there is 0.02 to 0.09 mass % of Fe and 0.02 to 0.09 mass % of Si.),
wherein a total amount of impurities contained in the bonding wire is equal to or smaller than 0.01 mass%, see the Abstract, and paragraph [0044] (In paragraph [0053], Sekiya discloses that impurities such as Ni, Ti, Ga, B, Zn, Cr, Mn, and Zr can be included in the Al bonding wire. However, Sekiya et al. lack anticipation of the concentration of impurities in the Al bonding wire being equal to or smaller than 0.01 mass%. However, in the same field of endeavor , Sumi discloses that the Al content of an Al bonding wire should be 98.4 or more, see paragraph [0044]. Using the upper limits of Fe, Mg, Si, and Cu, in a wire comprising 98.4 mass% Al, the concentration of impurities would be equal to or smaller than 0.01 mass%.), and
wherein, as a result of measuring a crystal orientation on a cross-section parallel to a wire axis direction including a wire axis of the bonding wire, an orientation ratio of a <100> crystal orientation angled at 15 degrees or less to the wire axis direction is equal to or higher than 30% and equal to or lower than 90%, see paragraphs [0065] and Table 2.
The preamble of claim 10 recites an Al bonding wire “for semiconductor devices”. When reading the preamble in the context of the entire claim, the recitation “for semiconductor devices” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kaneko, US 2020/0040432, cited by Applicant on the Information Disclosure Statement submitted on 07 March 2025, of record.
With respect to claim 1, Kaneko discloses an Al bonding wire for semiconductor devices (see paragraph [0156]) containing equal to or larger than 0.01 mass% and smaller than 0.8 mass% of one or more of Sc, Zr, and Mg in total (see paragraphs [0012]-[0016]),
wherein a concentration of Si contained in the bonding wire is equal to or larger than 0 mass ppm and equal to or smaller than 755 mass ppm (0.0755 mass%), see paragraph [0012],
wherein, as a result of measuring a crystal orientation on a cross-section parallel to a wire axis direction including a wire axis of the bonding wire, an orientation ratio of a <100> crystal orientation angled at 15 degrees or less to the wire axis direction is equal to or higher than 30% and equal to or lower than 90%, see Figs. 4A-4B, 5, and paragraphs [0024], .[0085]-[0088}, and [0111]-[0123]. The Al bonding wire of Kaneko has the same composition as Applicant’s claimed Al bonding wire and is evaluated by an x-ray diffraction method (shown in Figs. 4A and 4B) to have an orientation ratio, as disclosed in paragraphs [0024], .[0085]-[0088}, and [0111]-[0123]. Therefore, Applicant’s claimed Al bonding wire is deemed obvious in light of the disclosure of Kaneko.
Kaneko lacks anticipation only of the bonding wire containing a concentration of Sc equal to or larger than 0.01 mass % or equal to or less than 0.8 mass%. In the same field of endeavor, Sumi et al. disclose Sc in an amount of 0 to 0.50 mass% (see the Abstract and paragraph [0037]) is a component in an Al bonding wire derived from the aluminum raw material or added as necessary. Scandium suppresses the coarsening of crystal grains in the bonding wire and contributes to the improvement of its strength, see paragraph [0042]. Therefore, in light of the benefits of including Sc in an Al bonding wire, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Sc in the known bonding wire of Kaneko, wherein a concentration of Sc contained in the bonding wire is equal to or larger than 0.01 mass% and smaller than 0.8 mass%, in order to suppress the coarsening of crystal grains in the bonding wire and improve its strength.
With respect to claim 2, the Al bonding wire of Kaneko further contains equal to or larger than 3 mass ppm and equal to or smaller than 500 mass ppm of one or more of Pd and Pt in total, see paragraphs [0016] and [0135]. Kaneko discloses that the Al bonding wire can be covered with Pd, resulting in improvements in contact resistance, solder wettability, and corrosion resistance. Although Kaneko does not expressly disclose that this coating is equal to or larger than 3 mass ppm and equal to or smaller than 500 mass ppm, since Kaneko discloses the inclusion of Pd improves contact resistance, solder wettability, and corrosion resistance, the amount of Pd is a result-effective variable. Therefore, the determination of the optimum amount of Pd covering the Al bonding wire could have been achieved through routine experimentation.
With respect to claim 3, the Al bonding wire of Kaneko further contains equal to or larger than 3 mass ppm and equal to or smaller than 100 mass ppm of Ni, see paragraph [0012].
With respect to claim 4, the Al bonding wire of Kaneko further contains
equal to or larger than 3 mass ppm and equal to or smaller than 750 mass ppm of one or more of Fe and Si in total, see paragraph [0012]..
With respect to claim 7, Kaneko discloses a semiconductor device comprising the Al bonding wire, see paragraph [0145].
Response to Arguments
Applicant's arguments filed 10 June 2026 have been fully considered but they are not persuasive. Applicant has argued that claim 1 expressly requires measuring crystal orientation "on a cross-section parallel to a wire axis direction including a wire axis of the bonding wire", whereas Sekiya et al. teach that orientation analysis is performed "in the cross-section vertical to the wire-drawing direction of the wire". However, contrary to Applicant’s argument, a cross-section vertical to the wire drawing direction is clearly a cross-section parallel to the wire-drawing direction. As vertical is defined as “perpendicular to the plane of the horizon or to a primary axis”, a cross-section vertical to the wire-drawing direction would be a cross-section above or below the wire-drawing direction, or “a wire axis”, as required in independent claims 1 and 10. Therefore, analysis of the Al wire of Sekiya et al. is clearly on a longitudinal cross-section parallel to a wire axis, as required in independent claims 1 and 10.
In the present rejections, Sumi et al. has been relied upon as a teaching to include Sc in the Al bonding wire. Applicant has further argued that Sumi is directed to an aluminum wire in which Co plays an important role in achieving the objectives of the invention. Applicant has further argued that Sumi et al. explains that Co contributes to suppression of crystal grain coarsening and improvement of wire properties (see, e.g., paragraphs [0032], [0038], and [0066]-[0070]). However, Sumi clearly teaches in paragraph [0042] that Sc in an amount of 0 to 0.50 mass% suppresses the coarsening of crystal grains in the bonding wire and contributes to the improvement of its strength. Sumi further discloses that Sc is introduced into the Al bonding wire from the aluminum raw material or purposely added. Whereas Sumi may teach that Co is an essential component to be added to an Al bonding wire, this does not diminish the reference as a teaching to also include Sc in the Al bonding wire. It has been well established that 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). Sumi et al. clearly teaches that Sc suppresses the coarsening of crystal grains in the bonding wire and contributes to the improvement of its strength, as taught in paragraph [0042]. Therefore, in light of the benefits of including Sc in an Al bonding wire, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Sc in the known bonding wire of Sekiya et al., wherein a concentration of Sc contained in the bonding wire is equal to or larger than 0.01 mass% and smaller than 0.8 mass%, in order to suppress the coarsening of crystal grains in the bonding wire and improve its strength.
With respect to the rejections based on Kaneko, Applicant has argued that Kaneko does not teach or suggest the addition of Sc. As noted above, Sumi clearly teaches the inclusion of Sc in an Al bonding wire. Applicant has argued that the Office Action has not established why a person of ordinary skill in the art would have selectively extracted Sc from the Co-containing alloy system of Sumi and incorporated Sc alone into the bonding wire. The Examiner disagrees, since Sumi clearly teaches in paragraph [0042] that Sc in an amount of 0 to 0.50 mass% suppresses the coarsening of crystal grains in the bonding wire and contributes to the improvement of its strength. Sumi further discloses that Sc is introduced into the Al bonding wire from the aluminum raw material or purposely added. Whereas Sumi may teach that Co is an essential component to be added to an Al bonding wire, this does not diminish the reference as a teaching to also include Sc in the Al bonding wire of Kaneko. It has been well established that 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). Sumi et al. clearly teaches that Sc suppresses the coarsening of crystal grains in the bonding wire and contributes to the improvement of its strength, as taught in paragraph [0042]. Therefore, in light of the benefits of including Sc in an Al bonding wire, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include Sc in the known bonding wire of Sekiya et al., wherein a concentration of Sc contained in the bonding wire is equal to or larger than 0.01 mass% and smaller than 0.8 mass%, in order to suppress the coarsening of crystal grains in the bonding wire and improve its strength.
Applicant has further argued that the presently claimed upper limit for Si of 755 mass ppm corresponds to only 0.0755 mass%, which is substantially below Kaneko's stated lower limit of 0.2 mass%. Thus, Applicant argues that Kaneko expressly teaches that Si concentrations below 0.2 mass% are undesirable because the intended strengthening and fatigue-resistance effects become insufficient. Applicant argues that Kaneko therefore directs a person of ordinary skill in the art away from the presently claimed Si concentration range rather than toward it. However, whereas Kaneko teaches a Si concentration of 0.2 to 2.0 mass %, Sumi et al. clearly teach a Si concentration 0.02 to 0.09 mass % yields an Al bonding wire having superior strength, elongation, electrical conductivity, and heat resistance. Kaneko is clearly not limited to what is expressly taught, rather, Kaneko can clearly be modified by the disclosure of Sumi. Sumi clearly teaches benefits associated with a Si concentration 0.02 to 0.09 mass %. As noted above, to be useful in an obviousness rejection, a secondary reference should be used for what it teaches and need not b bodily incorporated into the primary reference.
Generally, differences in concentration do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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) In the instant case, both Kaneko and Sumi teach to include Si in an Al bonding wire. Therefore, the claimed concentration of Si in the Al bonding wire is not deemed to patentably distinguish Applicant’s claimed Al bonding wire from that of Kaneko and Sumi. The teaching of Sumi that Si concentrations of 0.02 to 0.09 mass % provide beneficial results would have motivated one of ordinary skill in the art to use Si in an amount of 0.0755 mass % or less in the known Al bonding wire of Kaneko.
Additionally, it is noted that independent claim 1 requires a concentration of Si contained in the bonding wire is equal to or larger than 0 mass ppm and equal to or smaller than 755 mass ppm (emphasis added). Similarly, independent claim 10 requires a total amount of Fe and Si contained in the bonding wire is equal to or larger than 0 mass ppm and equal to or smaller than 750 mass ppm (emphasis added). Therefore, Applicant’s claimed Al bonding wire does not require Si. Therefore, there appears to be no criticality for the inclusion of Si in the claimed bonding wire.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited reference to Yamada discloses an Al bonding wire..
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY A WILCZEWSKI whose telephone number is (571)272-1849. The examiner can normally be reached M-TH 7:30 AM-5:00 PM.
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MARY A. WILCZEWSKI
Primary Examiner
Art Unit 2898
/MARY A WILCZEWSKI/Primary Examiner, Art Unit 2898
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