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 .
Claim Objections
Claim 12 is objected to because of the following informalities: Claim 12 discloses that it is dependent upon the “method of Claim 11”, when in fact claim 11 has been cancelled by the Applicant. Given that the subject matter of claim 11 has been incorporated into claim 6 by the Applicant’s amendment, it seems very likely that claim 12 should be amended to depend from claim 6. Claim 12 has been interpreted in this manner for examination. Appropriate correction is required.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to a circuit board product, classified in H05K 1/115.
II. Claims 6-10 and 12, drawn to a method for forming a circuit board, classified in H05K3/4614.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made, respectively. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process of group II can be used to make a materially different product, such as one which does not have a “nonfunctional pad comprising a portion of conductive material patterned from the first electrically-conductive layer but electrically decoupled from the electrically-conductive pattern” as is expressly required in the product, because in the method of group II, that pad is “entirely remove[d]” from the final product formed. Additionally, the product of group I can be made by a materially different process, such as one in which the layers are not laminated (through the use of pressure and heat, as is well understood in the art), but instead is manufactured by a subtractive process or a deposition layering or the like.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired separate status in the art due to their divergent subject matter. There would be an overly burdensome search (i.e. searching different CPC listings, and/or different search queries and terms, etc.) if the distinct limitations, as detailed above, of the different inventions were examined together. Each of the CPC listings above contains thousands of prior art references, which must be reviewed according to the chosen embodiment. Even if there is overlap in the CPC listings to be searched, focus on more than one of the above groups would render the search overly burdensome. Further, searches in other databases, such as WIPO, ip.com and Google Patents, as well as text modified searches in PE2E-Search, would each require distinct search terms and would produce additional prior art listings which need to be reviewed. Further still, the currently examined claims do not require search in H05K 1/115 or other H05K 1 series listings, each of which also contain thousands of additional prior art references, and which would be required in a search of the product of claims 1-5. Such a search would represent a serious and undue search burden if examined in conjunction with the already presented, examined and elected claims.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Paige Welch on 02/26/2026 a provisional election was made with traverse to prosecute the invention of group II, claims 6-10 and 12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-5 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claims 6-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2022/0159824 A1), in view of Yu (US 2017/0142829 A1).
Regarding claim 6, Wu discloses a method for forming a circuit board (Title; Abstract; figs. 1A-1K), comprising: patterning, a first electrically-conductive layer (114) of a plurality of electrically-conductive layers (114, 116, 124, 134, 140, 125, B1) to include: an electrically-conductive pattern (middle one of 115) patterned to be electrically coupled to an electrically-conductive network (140, 153, etc.) within the circuit board; and a nonfunctional pad (left one of 115) comprising a portion of conductive material patterned from the first electrically-conductive layer but electrically decoupled (fig. 1G) from the electrically-conductive pattern (figs. 1A-1B; pars. 0033-0034 and 0039); laminating, after the patterning of the first electrically-conductive layer, a first electrically-insulative layer (122) of a plurality of electrically-insulative layers (112, 122, 132, 152, 162) over the first electrically-conductive layer such that: resin of the first electrically-insulative layer fills a void between the electrically-conductive network and the nonfunctional pad (figs. 1B-1C; par. 0034); and each of the plurality of electrically-insulative layers is located between adjacent layers of the plurality of electrically-conductive layers, thereby laminating the plurality of electrically-conductive layers and plurality of electrically-insulative layers together (figs. 1C-1G; pars. 0032 and 0038-0040); and drilling a via hole (T1) in the circuit board to remove the nonfunctional pad (fig. 1D; par. 0035). Wu, however, does not explicitly disclose that the drilling of the via hole in the circuit board has the effect of entirely removing the nonfunctional pad.
Yu teaches that it is well known to perform a similar method for forming a circuit board (Title; Abstract) comprising: providing a nonfunctional pad (118) comprising a portion of conductive material electrically decoupled from the electrically-conductive pattern (108) (fig. 7; pars. 0027-0028); laminating, after the patterning of the first electrically-conductive layer, a first electrically-insulative layer (124) of a plurality of electrically-insulative layers (124, 132, 140, 142, etc.) over the first electrically-conductive layer such that: resin of the first electrically-insulative layer fills a void between the electrically-conductive network and the nonfunctional pad (fig. 7; pars. 0027-0028); and drilling a via hole (161) in the circuit board to remove the nonfunctional pad (fig. 13; par. 0034).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Wu to incorporate the entire removal of the nonfunctional pad of Yu. POSITA would have realized that entire or partial removal can be easily and readily employed to achieve the desired capability for interlayer connection, avoidance of short circuiting or deleterious crosstalk, and the like. Moreover, there is no indication in the instant disclosure that any special pad removal step was devised or that any surprising results were derived from simply using the old method of Wu with the well-known entire pad removal of Yu. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success. Additionally, it is not likely that the preferred entire removal of the nonfunctional pad of the product would have any bearing or effect upon the steps of the method or its outcome. If the removal of all of the nonfunctional pad of Yu were incorporated in the intended product, the method of Wu would be performed in effectively the same manner as originally disclosed by Wu and would predictably have essentially the same outcome.
Regarding claim 7, Wu in view of Yu teaches the method of claim 6 as detailed above, and Wu further discloses locating the nonfunctional pad at an intended location of a via (T) in the circuit board (figs. 1C-1D and 1G).
Regarding claim 8, Wu in view of Yu teaches the method of claim 7 as detailed above, and Wu further discloses patterning the nonfunctional pad to have a width (measured left-to-right of pad left behind from patterning on right hand side of via, T1, in fig. 1D, as viewed) smaller than a width (measured left-to-right, as viewed) of an intended hole (T1) configured for accommodating the via (T) (figs. 1D-1E).
Regarding claim 9, Wu in view of Yu teaches the method of claim 6 as detailed above, and Wu further discloses that the plurality of electrically-conductive layers comprise copper (par. 0034).
Regarding claim 12, Wu in view of Yu teaches the method of claim 11 (interpreted as “claim 6”) as detailed above, and Wu further discloses depositing an electrically-conductive via in the via hole (figs. 1E-1G; pars. 0037-0039).
Regarding claim 9, Wu in view of Yu teaches the method of claim 6 as detailed above. Wu further discloses that the plurality of electrically-insulative layers comprise at least one core layer (figs. 1A-1E; par. 0032). Wu, however, does not explicitly disclose that the insulating layers comprise at least one resin-prepregnated layer.
Yu teaches that it is well known that the plurality of electrically-insulative layers comprise at least one resin-prepregnated layer (figs. 2-3; pars. 0004 and 0024).
It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to use the old and well-known pre-preg of Yu, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. POSITA would have realized that any number of preferred insulating materials can be easily and readily selected to achieve the desired electrical impedance, flexibility, adhesion or other well-known material property. Moreover, there is no indication in the instant disclosure that any special resin impregnation step or material was devised or that any surprising results were derived from simply using the old method of Wu with the well-known resin-prepregnated layer of Yu. In fact, there is no indication that this choice of material affects the method of laminating at all. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the arguments do not apply to the references as they are currently being used in the instant rejection.
In the rejection of claim 6, Wu is not relied upon to disclose or teach the newly added and argued limitation of “drilling a via hole in the circuit board to entirely remove the nonfunctional pad”. Accordingly, the argument with respect to that limitation is moot.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Hsieh et al. (US 10,319,681 B2) is held to be of particular relevance to the claimed invention.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 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, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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