Attorney’s Docket Number: TOSH/0947US
Filing Date: 08/29/2023
Claimed Foreign Priority Date: 03/22/2023 (JP 2023-045812)
Applicant(s): Obara et al
Examiner: Aneesa Baig
DETAILED ACTION
This Office action responds to the election filed on 07/17/2025
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 .
Election/Restrictions
Applicant’s election of Species 1 (reading on Figs. 1-7) in the reply filed on 12/24/2025, is acknowledged. Applicant indicated that claim 1-5 and 11 read on the elected species. Examiner agrees. Accordingly, claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species.
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.
Claims 1-5,11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 recites “at least two bonding metal portions positioned between the first substrate and the second substrate in the first direction” then later recites “a foundation metal film provided between the bonding metal portions” at L. It is unclear if both recitations of bonding metal portions are directed to a same or different features and if the foundation metal film is on both bonding metal portions, thus rendering the claim indefinite. For the purpose of examination, the claim will be construed as reciting -- a foundation metal film provided between at least two bonding metal portions --, as best understood by the examiner in view of the original disclosure, until further clarifications are provided by the applicant.
Claim 11 recites “the bonding metal portions” leading to the same rejection as above. For the purpose of examination, the claim will be construed as reciting the at least two bonding metal portions --, as best understood by the examiner in view of the original disclosure, until further clarifications are provided by the applicant
Claims 2-5 and 11 depend from claim 1, thus inherit the deficiencies identified supra.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al (US 20040169147 A1, Hereinafter Ono) Embodiment 1 in view of Ono-Embodiment 5.
Regarding claim 1, Ono-Embodiment 1 (e.g., Figs. 4-11, 16-20, 25-27 paragraphs [0031] - [ 0050],[0067 ] - [ 0071],[0060 ] - [0100]) shows a bonding type interconnection member, comprising:
a first substrate having a first through hole extending in a first direction (e.g., beam apertures 51 in the electrode substrate 400 (FIGS. 4A and 4B)[0055]);
a second substrate facing the first substrate in the first direction and having a second through hole extending in the first direction (e.g., 500 with beam apertures 51’ rear-surface hole 950 (Fig 9) beam apertures in the wiring layers after the electrode substrate 400 and wiring substrate 500 are bonded, the beam apertures are desirably formed in the wiring layers before the bonding [0071]);
an interconnection portion positioned between the first substrate and the second substrate in the first direction, stacked on at least one of the first substrate and the second substrate (e.g., fig 9 and 6 shows a wiring substrate on 500 with through holes), and having a through hole continuous with the first through hole and the second through hole;
at least two bonding metal portions positioned between the first substrate and the second substrate in the first direction, and bonding the first substrate and the second substrate (connection wiring pads (52' and 53') of the wiring substrate 500 are made of Au-Sn while Au--Sn--Au eutectic bonding is performed between the electrode substrate 400 and Au electrodes); and
a foundation metal film provided between the bonding metal portions and the interconnection portion (e.g., TiN metal film described in [0069]),
While embodiment 1 of Ono does not shows a side conductive film, the fifth embodiment (2500, Figs 25-27 Par [0115]-[0124]) teaches a conductive film (2604 and 2502) provided on a side surface of the through hole of the interconnection portion to reduce the occurrence of charge-up during electron beam irradiation. Ono also teaches that the GND electrode 2502 is made of Ti and Au (Fig 26 an [0123]) while the foundation metal film (TiN) and bonding metal portions (Sn-Au) are made of a material different from one other.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have a side conductive film on the embodiment 1 of Ono, as taught by embodiment 5 of Ono, to reduce the occurrence of charge-up during electron beam irradiation.
Regarding Claim 2, See comments from Claim 1, as they would be considered repeated here.
Regarding Claim 3, Ono-Embodiment 1 shows (Fig 6), an interconnection layer in substrate 500.
Regarding Claim 4, Ono-Embodiment 1 and Embodiment 5 shows (Fig 6), and interconnection layer including an insulating layer (e.g., “thick insulating film (SiO.sub.2) is deposited on an Si substrate” [0064]) with a GND electrode (2502) covering the through hole of the insulating layer (Fig 25).
Regarding Claim 5, See comments from Claim 4, as they would be considered repeated here
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18458109 (US20240321789 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the co-pending application, and is a broader statement of the invention as currently claimed in the co-pending application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 (referencing Claims 7 and 1) of co-pending application patent 18458109 anticipates claim 1 of the instant invention
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references cited disclose FETs used in display panels.
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/ANEESA RIAZ BAIG/
Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814