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 .
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 12/19/23 was/were received by the Examiner before the issuance/mailing date of the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered (except for anything in foreign language non-accompanied by an English translation) by the Examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 19 recites “a solder of the first frame-shaped solder reservoir”. It is unclear what Applicants are calling a solder of the frame-shaped solder reservoir. As written, the quoted limitation above encompasses a structure wherein the solder is one element besides others of the frame-shaped solder reservoir, but there is nothing like that described accompanied by unambiguous and labeled structural elements in drawings where the solder can be seen with other elements comprised in the frame-shaped solder reservoir. [0068] and [0070] of the PGPub of this application are the sections where the liquefying of the so-called frame-shaped solder reservoir (which are entities 10 and 13) are described in conjunction with drawings, but it appears to the Examiner that entities 10 and 13 are each a solder layer and at the same time also the so-called frame-shaped solder reservoir. Applicants will need to modify the claim language as it encompasses a configuration they have not disclosed and therefore cannot claim. The Examiner has assumed “liquefying
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 34 and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimada et al. (JP 2005203669).
a. Re claim 34, Shimada et al. disclose an electronic device comprising: a carrier 1 (see figs. 1-2 and related text; see remaining of disclosure for more details) on which an electronic semiconductor chip 6 (see at least pg. 6) and a first frame-shaped metallization 4 (see at least pg. 5) are arranged, wherein the first frame-shaped metallization surrounds the electronic semiconductor chip; and a connecting element 3 (see at least pg. 5) with a first main surface (top or bottom surface), wherein a first frame-shaped solder layer 8 (see at least pg. 5) mechanically connects the first frame-shaped metallization and the connecting element, and wherein the first frame-shaped solder layer has a seam (outer lateral protruding portion 8 extending outward from the footprint of 4) on a side surface of the first frame-shaped metallization (explicit on figs. 1-2).
b. Re claim 36, the electronic semiconductor chip is a light emitting diode chip, a laser diode chip or a sensor (piezoelectric vibrator; see pg. 6).
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.
Claim(s) 19, 21 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimada et al. (JP 2005203669).
a. Re claim 19 and in view of the 112 1st rejection above, Shimada et al. disclose a method for manufacturing an electronic device, the method comprising: providing a carrier 1 (see figs. 1-2 and related text; see remaining of disclosure for more details) having a mounting area 1a on which an electronic semiconductor chip 6 is arranged; providing a connecting element 3 having a first main (bottom) surface; applying a first frame-shaped metallization 4 to or over the carrier and applying a first frame-shaped solder reservoir 8 (prior to brazing and located directly between 8 and 4 and in the footprint of 4; see at least pg. 5) over the first main surface of the connecting element or applying the first frame-shaped metallization over the first main surface of the connecting element and applying the first frame-shaped solder reservoir over or to the carrier (8 is applied to connecting element 3 and/or to metallization 4 on figs. 1-2 and related text); and liquefying
However, there are only three possible scenarios width-wise for applying solder 8 to metallization 4 prior to brazing: (1) solder 8 has a smaller width than metallization 4; (2) solder 8 has a same width as metallization 4; (3) solder 8 has a larger width than metallization 4. As such, and noting that the rationale to modify or combine the prior art does not have to be expressly stated in the prior art but may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law (see MPEP 2144.I), and further noting that the desire to enhance commercial opportunities by improving a product or process is universal and even common-sensical (see MPEP 2144.II), and finally noting from MPEP 2141.03 that “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton” and that a “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.”, it would have been obvious to one skilled in the art before the effective filing date of the invention to have provided a width of the first frame-shaped solder reservoir 8 to be smaller than a width of the first frame-shaped metallization while ensuring of enough amount of said frame-shaped reservoir solder 8 to form the seam after melting during the brazing operation, and this as a non-inventive step of something obvious to try by choosing from a limited number of possible scenarios (see MPEP 2143.E) while saving cost by reducing the amount of frame-shaped solder reservoir 8 used (see MPEP 2144.I&II).
b. Re claim 21, a side surface of the first frame-shaped metallization and/or a side surface of the further frame-shaped metallization is wettable for the solder of the first frame-shaped solder reservoir (explicit on figs. 1-2 since solder 8 adhere to the side surface of 4), and wherein the solder of the first frame-shaped solder reservoir covers the side surface of the first frame-shaped metallization (explicit on figs. 1-2) and/or the side surface of the further frame-shaped metallization during liquefaction so that the seam is formed from the solder on the side surface.
c. Re claim 26, Shimada et al. disclose all the limitations of claim 19 as stated above except explicitly that the solder is liquefied by pressure. However, it would have been obvious to one skilled in the art before the effective filing date of the invention to have liquefied the solder par pressure, and this as a non-inventive step of using a known alternative to brazing in the art to melt solder.
Allowable Subject Matter
Claim 35 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hirano et al. (US 8,698,264) disclose a structure and method of forming thereof similar to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PENIEL M GUMEDZOE whose telephone number is (571)270-3041. The examiner can normally be reached M-F: 9:00AM - 5:30PM.
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, Dale Page can be reached at 5712707877. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PENIEL M GUMEDZOE/Primary Examiner, Art Unit 2899
Prosecution Insights