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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claim(s) 1-3, 5, 7-10 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eiji (US 20210195755).
As to claim 1, Eiji discloses a method for manufacturing a wiring board. Eiji discloses that the method comprises of: obtaining a laminated body LB including the wiring board or the wiring board material having an opening, an embedded member positioned in the opening, and a cured product of a filling sheet or a coating layer that is integrated with the wiring board or the wiring board material and contains filling sheet 16 with thermosetting resin 17, the thermosetting coating resin 17 being filled between an inner surface of the opening of the wiring board or the wiring board material and the embedded member 14, and a resin film 21 having an opening at a position corresponding to the opening of the wiring board or the wiring board material, the resin film is attached to the wiring board or the wiring board material: removing the cured product of the filling sheet or the coating layer by grinding (¶80) to obtain a constant thickness of the laminated body so that a part of the resin film is removed; and peeling (¶110) a remaining part of the resin film 21 from the laminated body (Fig. 4j & 4k) (Fig. 2 and 4 below; ¶70-8, ¶107-120).
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As to claim 2, the method of claim 1 is taught as seen above. Eiji discloses that the laminated body is grinded to obtain a laminated body of constant thickness (¶81) and that the laminated body is made by a heating and pressing step (¶76).
As to claim 3, the method of claim 1 is taught as seen above. Eiji discloses that the removal step is performed after curing the laminated body (¶75-77).
As to claim 5, the method of claim 1 is taught as seen above. Eiji discloses that the prepreg 16 may comprise of thermosetting resin and fiber (¶62).
As to claim 7, the method of claim 1 is taught as seen above. Eiji discloses that the embedded member may comprise of metal (¶61).
Claim 8 is rejected for the same reasons as claim 1 above because Eiji teaches that the filling sheet 16 contains a coating layer 17 which comprises of a thermosetting resin.
As to claims 9-10 and 13, the method of claim 8 is taught as seen above. Claims 9-10 and 12 are rejected for respectively the same reasons as claims 2-3 and 7 above.
Claim Rejections - 35 USC § 103
Claim(s) 4 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eiji (US 20210195755).
As to claim 4, the method of claim 1 is taught as seen above. Eiji discloses that a film 21 may be attached to the bottom of the laminate and subsequently peeled away (Fig. 4), but fails to specifically teach or disclose that the residual film from other attachment film 21 laminated to the top of the laminate and grinded away may be peeled away. It is the position of the Examiner that it would have been obvious to one of ordinary skill in the art at the time of filing to use a known successful method of removing film 21, such as peeling of film 21 on the bottom of the laminate as disclosed by Eiji, to remove any residual remains of film 21 because such a modification would have been within his technical grasp. Furthermore, a person of ordinary skill in the art, upon reading Eiji, would have recognized that peeling is one of a finite number of methods for removing film material known to be useful for removal of undesired film in a wiring board laminate. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the invention to try the peeling step of removing residual film not removed in a grinding step in the method by Eiji because a person with ordinary skill has good reason to pursue the known option within his or her technical grasp. “A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but or ordinary skill and common sense." KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
As to claim 11, the method of claim 8 is taught as seen above. Claim 8 is rejected for the same reasons as claim 4 above.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eiji (US 20210195755) in view of Nakamura (US 20020023342).
As to claim 6, the method of claim 1 is taught as seen above. Eiji fails to teach or disclose how the metal embedded members are placed within the openings. Nakamura discloses a method of manufacturing a wiring board. Nakamura teaches that it is known and conventional in the art to place metal stud bumps by within openings in a wiring board by ultrasonic vibrations to bond said metal stud bump in said opening (¶63-65). It would have been obvious to one of ordinary skill in the art at the time of filing to use the vibration bonding method of Nakamura in the method taught by Eiji because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional method of bonding a metal embedded piece into the opening of a wiring board. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
As to claim 12, the method of claim 8 is taught as seen above. Claim 12 is rejected for the same reasons as claim 6 above.
Response to Arguments
Applicant's arguments filed September 12, 2025 have been fully considered but they are not persuasive.
Applicant argues on pages 8-10 that the prior art fails to specifically teach or disclose a step of removing the cured product of the filling sheet by grinding to obtain a constant thickness of the laminated body so that part of the resin film is removed; and peeling a remaining part of the resin film from the laminated body” as recited in claim 1.
Applicant contends that there is no teaching or disclosure regarding a removal of the upper mask portion 21 which is removed in Fig. 4(h) and 4(i). This argument is not persuasive since, as seen in the rejection above, Eiji discloses that the remaining portion of the lower mask resin film 21 is peeled away from the bottom of the laminated body after the grinding step. Applicant has not utilized any claim language in claim 1 that would require that a part of an upper resin film remain, only that the remaining resin film on the laminate after the grinding step be peeled away. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As to how these same arguments would apply to claim 4 which would require a remaining portion of an upper resin film left after a grinding step, as seen in the rejection above, it would have been obvious to one of ordinary skill in the art at the time of filing to use a known successful method of removing film 21, such as peeling of film 21 on the bottom of the laminate as disclosed by Eiji, to remove any residual remains of film 21 because such a modification would have been within his technical grasp.
Conclusion
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 CHRISTOPHER C CAILLOUET whose telephone number is (571)270-3968. The examiner can normally be reached M-F 9AM-5PM EST.
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/CHRISTOPHER C CAILLOUET/Examiner, Art Unit 1745
/GEORGE R KOCH/Primary Examiner, Art Unit 1745