Attorney Docket Number: JCGL129120
Filing Date: 11/01/2023
Claimed Priority Date: 11/22/2022 (claims benefit of PRO 63/427,436)
Inventor: Kim
Examiner: Shamita S. Hanumasagar
DETAILED ACTION
This Office action responds to the application filed on 11/01/2023.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the features canceled from the claims. No new matter should be entered.
“Wherein the heat dissipation via has a structure in which at least one of the longitudinal diameter and the transverse diameter is changed in the thickness direction of the core substrate”, as recited in claim 6
“Wherein the mounting region includes a thermally conductive part configured to thermally connect the second heat dissipation portion and the heat dissipation via”, as recited in claim 9
“Wherein the heat dissipation via comprises a thermally conductive layer…”, as recited in claim 10
“A main board electrically connected to the packaging substrate”, as recited in claim 11
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The claims are objected to because of the following informalities:
In lines 1-2 of claim 3, “wherein, when observed from the upper surface of the packaging substrate, wherein the heat dissipation via…” should read “wherein, when observed from the upper surface of the packaging substrate, the heat dissipation via…”
Appropriate correction is required. No new matter should be added.
Claims Rejections
Initially, and with respect to claim 1, note that a “product by process” claim is directed to the product per se, no matter how actually made. See In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. As stated in Thorpe,
even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that the applicants have the burden of proof in such cases, as the above case law makes clear.
As to the grounds of rejection under section 103, see MPEP § 2113, which discusses the handling of “product by process” claims and recommends the alternative (§ 102/ § 103) grounds of rejection.
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 2-3, 6-7, and 9-10 are rejected under 35 U.S.C. 112(b) for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 2, parental claim 1 recites the limitation “wherein the first heat dissipation portion comprises one or more heat dissipation vias…”. Claim 2, dependent on claim 1, further recites the limitation “wherein an aspect ratio of the heat dissipation via…”. Since parental claim 1 allows for the presence of more than one heat dissipation via, it is unclear from the language of the claims whether dependent claim 2’s limitation of “the heat dissipation via” is intended to apply to a specific singular heat dissipation via or to a plurality of heat dissipation vias as permitted by claim 1. Accordingly, this limitation in the claim is indefinite as it is unclear from the claims to which vias the limitation of claim 2 is meant to apply.
Regarding claim 3, parental claim 1 recites the limitation “wherein the first heat dissipation portion comprises one or more heat dissipation vias…”. Claim 3, dependent on claim 1, further recites the limitation “wherein the heat dissipation via is disposed to be spaced apart…” Since parental claim 1 allows for the presence of more than one heat dissipation via, it is unclear from the language of the claims whether dependent claim 3’s limitation of “the heat dissipation via” is intended to apply to a specific singular heat dissipation via or to a plurality of heat dissipation vias as permitted by claim 1. Accordingly, this limitation in the claim is indefinite as it is unclear from the claims to which vias the limitation of claim 3 is meant to apply.
Regarding claim 6, parental claim 1 recites the limitation “wherein the first heat dissipation portion comprises one or more heat dissipation vias…”. Claim 6, dependent on claim 1, further recites the limitations “wherein the heat dissipation via has a longitudinal diameter and a transverse diameter” and “wherein the heat dissipation via has a structure…”. Since parental claim 1 allows for the presence of more than one heat dissipation via, it is unclear from the language of the claims whether dependent claim 6’s limitations of “the heat dissipation via” are intended to apply to a specific singular heat dissipation via or to a plurality of heat dissipation vias as permitted by claim 1. Accordingly, these limitation in the claim are indefinite as it is unclear from the claims to which vias the limitations of claim 6 are meant to apply.
Claim 6 recites the limitation “wherein the heat dissipation via has a structure in which at least one of the longitudinal diameter and the transverse diameter is changed in the thickness direction of the core substrate”. Claim 6 itself and all parental claims fail to identify what “change” is meant to occur and subsequently fail to identify with respect to what the longitudinal diameter and/or the transverse diameter is meant to be changed. Accordingly, this limitation in the claim is indefinite as is it unclear with respect to what the longitudinal diameter and/or transverse diameter is intended to be “changed”.
Regarding claim 7, parental claim 1 recites the limitation “wherein the first heat dissipation portion comprises one or more heat dissipation vias…”. Claim 7, dependent on claim 1, further recites the limitation “wherein the heat dissipation via has an hourglass shape”. Since parental claim 1 allows for the presence of more than one heat dissipation via, it is unclear from the language of the claims whether dependent claim 7’s limitation of “the heat dissipation via” is intended to apply to a specific singular heat dissipation via or to a plurality of heat dissipation vias as permitted by claim 1. Accordingly, this limitation in the claim is indefinite as it is unclear from the claims to which vias the limitation of claim 7 is meant to apply.
Regarding claim 9, parental claim 1 recites the limitation “wherein the first heat dissipation portion comprises one or more heat dissipation vias…”. Claim 9, indirectly dependent on claim 1, further recites the limitation “to thermally connect… the heat dissipation via”. Since parental claim 1 allows for the presence of more than one heat dissipation via, it is unclear from the language of the claims whether dependent claim 9’s limitation of “the heat dissipation via” is intended to apply to a specific singular heat dissipation via or to a plurality of heat dissipation vias as permitted by claim 1. Accordingly, this limitation in the claim is indefinite as it is unclear from the claims to which vias the limitations of claim 9 are meant to apply.
Regarding claim 10, parental claim 1 recites the limitation “wherein the first heat dissipation portion comprises one or more heat dissipation vias…”. Claim 10, dependent on claim 1, further recites the limitation “wherein the heat dissipation via comprises a thermally conductive layer”. Since parental claim 1 allows for the presence of more than one heat dissipation via, it is unclear from the language of the claims whether dependent claim 10’s limitation of “the heat dissipation via” is intended to apply to a specific singular heat dissipation via or to a plurality of heat dissipation vias as permitted by claim 1. Accordingly, this limitation in the claim is indefinite as it is unclear from the claims to which vias the limitations of claim 10 are meant to apply.
Claim Rejections - 35 USC § 103
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.
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 1-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Kim (WO 2020/185016 A1), published on 09/17/2020. However, it is noted that all sections of Kim quoted in the present Office action are taken from its equivalent U.S. patent application US 2022/0051972.
Regarding claim 1, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and par.0117) shows all aspects of the instant invention, including a packaging substrate 20 having an upper surface (e.g., surface of 22 closest to 25) and a lower surface (surface of 20 closest to 10), the packaging substrate comprising:
a mounting region in which an element 40 is accommodated; and
a core substrate 21 in which the mounting region is disposed, wherein the core substrate is selected from a ceramic substrate, a glass substrate, or a combination thereof (see, e.g., par.0076/ll.1);
wherein the mounting region comprises:
a cavity portion 28 formed by recessing a portion of the core substrate 21 (see, e.g., par.0024/ll.1-3);
a cavity portion side surface (outermost portion of the dashed box denoting 28, adjacent to H or 283a, facing 231, and directly contacting 21) formed inside the core substrate in a thickness direction of the core substrate to form an outer periphery of the cavity portion; and
a first heat dissipation portion (23/24 in 221) (see, e.g., pars.0170, 0182-0183, 0186, 0194) disposed adjacent to the outer periphery of the cavity portion
wherein:
the first heat dissipation portion (23/24 in 221) is a thermal path through which heat of the packaging substrate 20 is transmitted outside (see, e.g., pars.0170, 0182-0183, 0186, 0194); and
wherein the first heat dissipation portion comprises one or more heat dissipation vias (23/24 in 221) each having an area of 5,000 µm2 to 75 mm2 (see, e.g., figs. 11(a)-12 and pars.0096 and 0098) when viewed from the upper surface (e.g., surface of 22 closest to 25) of the packaging substrate 20
Furthermore, it is noted that Kim shows all structural aspects of the device according to the claimed invention (see paragraph 21 above), and that the method steps of forming a cavity portion by recessing a portion of the core substrate are intermediate steps that do not affect the structure of the final device.
Additionally, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66. Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Nevertheless, differences in area will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed area produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed area limitation, i.e., 5,000 µm2 to 75 mm2, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality (see next paragraph below) of the claimed area, i.e., 5,000 µm2 to 75 mm2, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim.
CRITICALITY
The specification contains no disclosure of either the critical nature of the claimed area or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 2, Kim (see, e.g., figs. 11(a)-12 and pars.0096 and 0098) shows that an aspect ratio of at least one of the one or more heat dissipation vias observed from the upper surface (e.g., surface of 22 closest to 25) of the packaging substrate 20 is 0.1 to 10.
Additionally, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66. Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Nevertheless, differences in aspect ratio will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed aspect ratio produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed aspect ratio limitation, i.e., 0.1 to 10, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality of the claimed aspect ratio, i.e., 0.1 to 10, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim. See the comments stated above in paragraphs 21-27 with respect to claim 1 regarding criticality, which are considered to be repeated here.
With regards to other language recited in claim 2, see the comments stated above in paragraph 11.
Regarding claim 3, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and pars.0117-0118) teaches that when observed from the upper surface (e.g., surface of 22 closest to 25) of the packaging substrate 20, at least one of the one or more heat dissipation vias (23/24 in 221) is disposed to be spaced apart from another heat dissipation via by 50 µm to 1,000 µm. Kim further teaches that the closest surfaces of Kim’s one or more heat dissipation vias and cavity portion both comprise copper (see, e.g., pars.0136/ll.13 and 0194), indicating that the vias and cavity portion form part of a common conductive and structural system within the core substrate. Additionally, Kim teaches that the recited spacing enables the advantageous formation of electrically conductive layers (e.g., portions of 24 of Kim’s heat dissipation vias) while maintaining desired mechanical properties of the core substrate (see, e.g., pars.0117-0118 and 0136). These considerations of conductive layer formation and substrate mechanical integrity are not limited to via-to-via interaction, but instead generally apply to spacing between conductive features, particularly when those features are in close proximity and comprise the same material, as is the case with Kim’s at least one of the one or more heat dissipation vias and cavity portion. Accordingly, a person of ordinary skill in the art would have understood Kim’s disclosed spacing (i.e., 50 µm to 1,000 µm) to reflect a general design constraint governing the relative placement of adjacent conductive structures in a core substrate, including between a heat dissipation via and cavity portion. Accordingly, although Kim does not explicitly state that this spacing range applies between Kim’s at least one of the one or more heat dissipation vias and cavity portion 28, it would have been obvious to one of ordinary skill in the art at the time of filing the invention to have Kim’s at least one of the one or more heat dissipation vias (23/24 in 221) disposed to be spaced apart from the cavity portion 28 by 50 µm to 1,000 µm, as doing so would have predictably allowed the heat dissipation via nearest the cavity portion to benefit from the disclosed advantageous conductive layer formation and preservation of the mechanical integrity of the core substrate, motivated by the express teachings of Kim.
Nevertheless, differences in distance will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed interval distance produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed interval distance limitation, i.e., 50 µm to 1,000 µm, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality of the claimed interval distance, i.e., 50 µm to 1,000 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim. See the comments stated above in paragraphs 21-27 with respect to claim 1 regarding criticality, which are considered to be repeated here.
With regards to other language recited in claim 3, see the comments stated above in paragraph 12.
Regarding claim 4, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and pars.0117-0118) shows that the packaging substrate 20 comprises two or more heat dissipation vias (23/24 in 221), wherein the heat dissipation vias are disposed at an interval of 50 µm to 1,000 µm.
Additionally, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66. Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Nevertheless, differences in pitch (i.e., interval distance) will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed pitch/interval distance produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed pitch/interval distance limitation, i.e., 50 µm to 1,000 µm, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality of the claimed pitch/interval distance, i.e., 50 µm to 1,000 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim. See the comments stated above in paragraphs 21-27 with respect to claim 1 regarding criticality, which are considered to be repeated here.
Regarding claim 5, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and pars.0096, 0098, and 0117) shows wherein that when observed from the upper surface (e.g., surface of 22 closest to 25) of the packaging substrate 20, a ratio of an area of the entire heat dissipation vias (23/24 in 221) to an area of the cavity portion 28 is 1 to 50.
Additionally, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66. Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Nevertheless, differences in area will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed area ratio produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed area ratio limitation, i.e., 1 to 50, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality of the claimed area ratio, i.e., 1 to 50, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim. See the comments stated above in paragraphs 21-27 with respect to claim 1 regarding criticality, which are considered to be repeated here.
Regarding claim 6, Kim shows most aspects of the instant invention (see paragraphs 21-27 above). Furthermore, Kim (see, e.g., figs. 2-3, 7(b), 9(a)-9(b), and 10(a)-10(b) and pars.0087/ll.1-3, 0096, and 0098/ll.1-3) shows that at least one of the one or more heat dissipation vias (23/24 in 221) has a longitudinal diameter (length of 23/24 in 221 corresponding to the direction of 211) and a traverse diameter CV1, wherein the heat dissipation via has a structure in which at least one of the longitudinal diameter and the transverse diameter is in the thickness direction of the core substrate and a minimum value between the longitudinal diameter and the transverse diameter is greater than or equal to 50 µm.
Additionally, it is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66. Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Nevertheless, differences in diameter will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed difference in diameter produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed difference in diameter, i.e., greater than or equal to 50 µm, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality of the claimed difference in diameter, i.e., greater than or equal to 50 µm, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim. See the comments stated above in paragraphs 21-27 with respect to claim 1 regarding criticality, which are considered to be repeated here.
With regards to other language recited in claim 6, see the comments stated above in paragraphs 13-14.
Regarding claim 7, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), and 15) shows that when the packaging substrate 20 is observed from a cross section in a direction perpendicular to the upper surface (e.g., surface of 22 closest to 25) of the packaging substrate, at least one of the one or more heat dissipation vias has an hourglass shape.
With regards to other language recited in claim 7, see the comments stated above in paragraph 15.
Regarding claim 8, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and pars.0170, 0181-0183, 0185-0186, and 0194) shows that the mounting region comprises a second heat dissipation portion H or 283a that is a part formed on an inner side of the cavity portion 28 and disposed adjacent to the cavity portion side surface (outermost portion of the dashed box denoting 28, adjacent to H or 283a, facing 231, and directly contacting 21) to transmit heat to the outside.
Regarding claim 9, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and pars.0170, 0181-0183, 0185-0186, 0193-0194, 0197) shows that the mounting region includes a thermally conductive part 283a or 291 (see, e.g., pars.0170 and 0183) configured to thermally connect the second heat dissipation portion H or 283a and at least one of the one or more heat dissipation vias (23/24 in 221).
With regards to other language recited in claim 9, see the comments stated above in paragraph 16.
Regarding claim 11, Kim (see, e.g., fig. 1 and par.0070) shows a semiconductor package 100 comprising the packaging substrate 20 according to claim 1 and a main board 10 electrically connected to the packaging substrate.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Chen (US 2022/0068760) and Nave (Nave, R. (2006, April 11). Thermal Expansion Coefficients at 20 C. Georgia State University - HyperPhysics: Thermodynamics.).
Regarding claim 10, Kim (see, e.g., figs. 1-2, 4(a)-4(b), 5, 7(b), 8, 10(b), 11(a)-11(b), 12, and 15 and pars.0136/ll.13, 0181-0183, and 0186) shows that at least one of the one or more heat dissipation vias (23/24 in 221) comprises a thermally conductive layer 24. Kim, however, fails to explicitly specify that a difference value in thermal expansion coefficients between the thermally conductive layer (i.e., copper) and the core substrate 21 (i.e., glass) is less than or equal to 10 ppm/°C. Chen, in the same field of endeavor and in a similar device to Kim, teaches a glass substrate like Kim and further teaches thermally conductive layers comprising gold to be equivalent to thermally conductive layers comprising copper (see, e.g., Chen: pars.0011 and 0078). Nave is provided to illustrate that materials have inherent “thermal expansion coefficient” properties, and that when a thermally conductive layer comprises gold that a difference value in thermal expansion coefficients between the thermally conductive layer and a glass core substrate is less than or equal to 10 ppm/°C.
Chen is evidence showing that one of ordinary skill in the art would appreciate that a thermally conductive layer comprising gold would be equivalent to a thermally conductive layer comprising copper, that is, a difference value in thermal expansion coefficients between a thermally conductive layer and a core substrate being less than or equal to 10 ppm/°C would be equivalent to an unspecified difference value in thermal expansion coefficients between a thermally conductive layer and a core substrate, and that such differences would result in no unexpected changes in the performance of the device of Kim. That is, the materials and thermal expansion coefficients of both Kim and Chen would yield the predictable result of providing suitable thermally conductive layers capable of thermal interconnection and able to transmit heat from elements of a packaging device to an external environment.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to have with Kim’s glass substrate either a thermally conductive layer comprising gold (i.e., a difference value in thermal expansion coefficients between a thermally conductive layer and a core substrate being less than or equal to 10 ppm/°C), as taught by Chen, or a thermally conductive layer comprising copper (i.e., an unspecified difference value in thermal expansion coefficients between a thermally conductive layer and a core substrate), as taught by Kim, because these were recognized as equivalents in the semiconductor art and would yield the predictable result of providing suitable thermally conductive layers capable of thermal interconnection and able to transmit heat from elements of a packaging device to an external environment. KSR International Co. v. Teleflex Inc., 550 U.S.-- ,82 USPQ2d 1385 (2007).
Moreover, the specific claim limitation that a difference value in thermal expansion coefficients between the thermally conductive layer and the core substrate is less than or equal to 10 ppm/°C is a property of the thermally conductive layer and core substrate of Kim’s device. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the instant case, Kim teaches the same thermally conductive layer and core substrate comprising glass as recited in the claim, therefore, the structures will have the thermal expansion coefficient difference value also recited in the claim.
Nevertheless, differences in thermal expansion coefficients will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such differences are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955). Applicant has not provided evidence demonstrating that the claimed thermal expansion coefficient difference produces results unexpected in kind or that the claimed values reflect criticality beyond what is taught or suggested by the prior art. Accordingly, the claimed thermal expansion coefficient difference limitation, i.e., less than or equal to 10 ppm/°C, does not render the claimed subject matter non-obvious.
Since the applicant has not established the criticality of the claimed difference in thermal expansion coefficients, i.e., less than or equal to 10 ppm/°C, it would have been obvious to one of ordinary skill in the art to use these values in the device of Kim. See the comments stated above in paragraphs 21-27 with respect to claim 1 regarding criticality, which are considered to be repeated here.
Conclusion
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/Shamita S. Hanumasagar/Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814
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