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
The Applicant's arguments filed 8/18/2026 have been fully considered but they are not persuasive.
The Applicant’s amendment filed on 8/18/2026 incorporates prior claim 4 and into claim 1 and cancels claim 4. On pages 8-10, with respect to prior claim 4 and claim 1 as currently amended, the Applicant alleges that it would not have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention before the effective filing date of the claimed invention to implement the combined teachings of Wei into Singh. The Applicant reasons that Wei’s manufacturing process is entirely different than Singh’s process, therefore one would not combine Wei’s manufacturing process with Singh’s process.
The Applicant also argues that Wei does not form a dielectric layer above each electronic component because only the outer wiring structure 60 and solder masks 70 are formed thereabove. Therefore, the Applicant alleges that the combination of Wei and Singh fails to disclose or suggest every limitation recited in prior claim 4 and claim 1 as currently amended.
The Examiner respectfully disagrees with the Applicant’s reasoning and conclusions.
Regarding prior claim 4 and claim 1 as amended, Singh discloses every limitation in the claim except for the limitation of: “a thickness T1 of the external insulating protective layer on the conductive component is thinner than a thickness T2 of the internal insulating protective layer on the electronic component.”
See Singh, Fig. 1B, annotated below.
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The rejection of claim 1 relies on Wei’s teaching of electronic components may have different thicknesses, and that the thickness of the respective insulating layer may be adjusted as needed so as to facilitate the embedding of electronic components of different thicknesses, as set forth in col. 6, lines 26-31, below.
Wei, col. 6, lines 26-31:
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Based on a reading of this cited portion of Wei, a person of ordinary skill in the art would have found it to be obvious that Singh’s electronic components 112, 116 and 118 may have different thicknesses and that an insulating protective layer over one electronic component would be thinner than an insulating protective layer over an electronic component having a different thickness.
The Applicant’s argument that one would not combine Wei’s manufacturing process with Singh’s process is not persuasive because Wei is cited for teaching that electronic components may have different thicknesses, and that the thickness of the respective insulating layer may be adjusted as needed. Therefore, the Applicant’s arguments that Wei’s manufacturing process is entirely different than Singh’s process and Wei does not form a dielectric layer above each electronic component because only the outer wiring structure 60 and solder masks 70 are formed thereabove are not persuasive.
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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over “Singh” (US 2019/0103365) in view of “Wei” (US 11,324,115).
Regarding claim 1, Singh discloses 1. An electronic device comprising: a wiring board having a mounting surface (Fig. 1B, [0019]; the package substrate 102 is a wiring board having a mounting surface);
a ground electrode that defines a ground region on the mounting surface (Fig. 1B, [0019]; the ground pad 104(2) is a ground electrode that defines a ground region on the mounting surface of the package substrate 102);
an electronic component that is located on the mounting surface and is disposed in the ground region (Fig. 1B, [0019]; the electronic components 116, 118 are located on the mounting surface and disposed in the ground region);
a conductive component that is disposed adjacent to an outer edge of the ground electrode and is electrically insulated from the ground electrode (Fig. 1B, [0019]; the antenna module 112 is laterally separated from the electronic components 116, 118 and is disposed adjacent to an outer edge of the ground electrode and is electrically insulated from the ground electrode);
an internal insulating protective layer that is disposed in the ground region and covers the electronic component (Fig. 1B, [0020]; the mold body 122 is an internal insulating protective layer that is disposed in the ground region and covers the electronic components 116, 118);
an external insulating protective layer that is disposed outside the ground region and covers the conductive component (Fig. 1B, [0020]; the mold body 136 is external insulating protective layer that is disposed outside the ground region and covers the antenna module 112);
and an electromagnetic wave shielding layer that is provided to extend over the internal insulating protective layer and the ground electrode and that covers the internal insulating protective layer and is electrically connected to the ground electrode, the electromagnetic wave shielding layer being a solidified product of an ink for forming an electromagnetic wave shielding layer (Fig. 1B, [0022]; the shielding layer 134 is an electromagnetic wave shielding layer that is provided to extend over the mold body 122 and the ground pad 104(2) and that covers the mold body 122 and is electrically connected to the ground pad 104(2). Examiner’s note: the limitation: “the electromagnetic wave shielding layer being a solidified product of an ink for forming an electromagnetic wave shielding layer” is a process limitation in a product claim and is treated in accordance with MPEP 2113. As this process limitation uses a product structure that is the same as the product of Singh, this limitation is therefore anticipated by Singh.).
Singh does not disclose a thickness T1 of the external insulating protective layer on the conductive component is thinner than a thickness T2 of the internal insulating protective layer on the electronic component.
Wei discloses a thickness T1 of the external insulating protective layer on the conductive component is thinner than a thickness T2 of the internal insulating protective layer on the electronic component (Fig. 5, col. 6, lines 25-32; a thickness of the first insulating layer 11a and a thickness of the third insulating layer 11c may be adjusted as needed).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Singh’s electronic device with Wei’s adjustable thickness of the insulating layer in order to accommodate the embedding of electronic components of different thicknesses, as suggested by Wei at col. 6, lines 25-30.
Regarding claim 5, Singh in view of Wei discloses the claimed invention as applied to claim 1, above.
Singh discloses 5. The electronic device according to claim 1, wherein the internal insulating protective layer contains an acrylic resin and the external insulating protective layer contains an acrylic resin,
or the internal insulating protective layer contains an epoxy resin and the external insulating protective layer contains an epoxy resin (Fig. 1B, [0021]; the mold body portions 122 and 136 are made of an encapsulant material such as multi-aromatic type epoxy resin).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Singh in view of Wei and “Kamata” (US 2023/0238219).
Regarding claim 2, Singh in view of Wei discloses the claimed invention as applied to claim 1, above.
Singh does not disclose the limitations of claim 2.
Kamata discloses 2. The electronic device according to claim 1, wherein a closest distance between the outer edge of the ground electrode and an edge of the conductive component is 0.1 mm to 10.0 mm (Fig. 7, [0049]; the distance between the lower ground electrode 51 and the backside surface of the substrate W is preferably 0.5 mm to 3 mm).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Singh’s electronic device, as modified by Wei, with Kamata’s ground electrode in order to have a function of concentrating an electric field between the lower ground electrode 51 and the end part of the backside surface of the substrate W with a dielectric or a space interposed therebetween, as suggested by Kamata at [0049].
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Singh in view of Wei and “Joimel” (US 2021/0159449).
Regarding claim 3, Singh discloses the claimed invention as applied to claim 1, above.
Singh does not disclose the limitations of claim 3.
Joimel discloses 3. The electronic device according to claim 1, wherein the thickness T1 of the external insulating protective layer on the conductive component is 2 μm to 200 μm (Fig. 3, [0068]; the thickness of the encapsulation layer 66 covering organic electronic component 18 is in the range from 1 μm to 50 μm).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Singh’s electronic device, as modified by Wei, with Joimel’s protective layer in order to improve the resistance to aging of organic electronic component 18, as suggested by Joimel at 0063].
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STANLEY TSO whose telephone number is (571)270-0723. The examiner can normally be reached Tu-Thurs 6am-6pm, alt M 6am-2pm.
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/STANLEY TSO/ Primary Examiner, Art Unit 2847
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