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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/08/2026 has been entered.
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.
Claims 1-6, 8-10, 13 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al. (US 2010/0290191) (Lin).
In reference to claims 1-6, 13, 10 and 17-18, Lin teaches a multi-layer structure ([0048]) (corresponding to a layered structure). The structure includes a substrate made of glass ([0051]) (corresponding to a substrate comprising glass or glass ceramic). An adhesion layer made of a single layer of titanium is disposed on the substrate and a seed layer formed by sputtering a copper layer is disposed on the adhesion layer ([0054]) (corresponding to an adhesion layer disposed on the substrate; a seed layer disposed on the adhesion layer, the seed layer comprising a first metal material; the adhesion layer comprises Ti; the first metal material comprises copper).
Lin further teaches a metal layer, a conductive layer, is formed on the seed layer ([0059]). The metal layer is composed of three metal layers formed by electroplating a copper layer to a thickness greater than 1 micrometer, such as between 2 and 30 micrometers on the seed layer ([0064]) (corresponding to a first conductive layer disposed on the seed layer, the first conductive layer comprising the first metal; the first conductive layer comprising a thickness from about 5 microns to about 20 microns). Next a nickel layer is formed on the copper layer by electroless plating ([0064]) (corresponding to a second conductive layer disposed directly on and contacting the first conductive layer, the second conductive layer comprising a second metal material; the first metal material is different from the second metal material; the second metal material comprises nickel).
Lin further teaches a thickness of the electroless plating layer is between 1 and 15 micrometers ([0064]) (corresponding to the second conductive layer has a thickness in a range of from about 0.1 microns to about 10 microns).
Lin teaches the copper layer has the thickness between 2 and 30 micrometers and the nickel layer has the thickness between 1 and 15 micrometers ([0064]). Thus, it is clear a thickness ratio of the first copper plating layer to the nickel plating layer falls within the presently claimed (corresponding to the first conducive layer and the second conductive layer have a thickness ratio in a range of from about 10:1 to about 1:1).
Given that the substrate, adhesion layer, seed layer and metal layer including a copper layer and nickel layer of Lin are substantially identical to the present claimed substrate, adhesion layer, seed layer, first conductive layer and second conductive layer in composition and structure, it is clear the copper layer of the metal layer and the electroless nickel plating layer of the metal layer of Lin would inherently include a first type of stress with respect to the substrate and the copper layer of Lin would inherently include a second type of stress with respect to the substrate, wherein the first type of stress and the second type of stress are selected from tensile stress and compressive stress, and the first type of stress is different from the second type of stress.
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). See MPEP 2112.01 (I).
In reference to claims 8-9 and 15-16, Lin teaches the limitations of claims 1 and 13, as discussed above. Lin teaches the multi-layered structure includes metal pillars or bumps ([0066]). The metal pillars or bumps include an electroplated copper layer and an electroless plated nickel layer on the copper layer ([0070]; [0124]; [0143]). Alternatively, the multi-layered structure includes a metal layer 33, 53, 73 composed of an electroplated copper layer and an electroless plated nickel layer formed on the electroplated copper layer ([0137]; [0203]; [0269]; Fig. 74) (corresponding to further comprising one or more additional pairs of alternating layers of the first conductive layer and the second conductive layer; the layered structure comprises from 1 to 4 additional pairs of alternating layers of the first conductive layer and the second conductive layer).
Claim Rejections - 35 USC § 102/103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 7 and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lin.
In reference to claims 7 and 14, Lin teaches the limitations of claim 1 and claim 13, as discussed above. Lin further teaches the adhesion layer is formed by sputtering a titanium-coating layer, such as a single layer of titanium-tungsten alloy or titanium and the seed layer is formed by sputtering a copper layer ([0054])(corresponding to the adhesion layer and the seed layer are sputtered coatings). The nickel plating layer is an electroless nickel plating layer ([0064]) (corresponding to the second conductive layer comprises electroless plated coatings).
Although Lin does not explicitly teach the copper layer of the metal layer is an electroless plated coating as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Lin meets the requirements of the claimed product, Lin clearly meets the requirements of the present claim.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Masai (US 2006/0222821).
In reference to claims 1-6, 10, 13 and 17-18, Masai teaches a composite substrate including a substrate and a conductive film thereon ([0002]) (corresponding to a layered structure). The conductive film is formed on the substrate via a seed layer ([0054]). The substrate is made of materials such as glass ([0055]) (corresponding to a substrate comprising glass or glass ceramic). The seed film is a laminate structure made of an adhesion layer made of titanium (Ti) and an electrode film made of copper (Cu) laminated in this order ([0057]) (corresponding to an adhesion layer disposed on the substrate; a seed layer dispose don the adhesion layer; the seed layer comprising a first metal material; the adhesion layer comprises Ti; the first metal material comprises copper).
The conductive film is configured with conductive materials such as copper or nickel ([0058]). The conductive film is a laminate including a main conductive film having an internal stress being a tensile stress and a sub-conductive film having an internal stress being a compressive stress ([0019]; [0058]) (corresponding to a first conductive layer disposed on the seed layer; the first conductive layer having a second type of stress with respect to the substrate; a second conductive layer disposed on the first conductive layer; the second conductive layer having the first type of stress with respect to the substrate; the first type of stress and the second type of stress are selected from tensile stress and compressive stress, and the first type of stress is different from the second type of stress).
Given that Masai teaches the main conductive film and sub-conductive film which overlaps the presently claimed first conductive layer and second conductive layer, including being configured with conductive material such as copper (Cu) or nickel (Ni), it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use nickel as the conductive material of the main conductive film and copper as the conductive material of the sub-conductive film, which is both disclosed by Masai and encompassed within the scope of the present claims (corresponding to the first conductive layer comprising the first metal material; the second conductive film comprising a second metal material; the first metal material is different from the second metal material; the first metal material comprises copper, and the second metal material comprises nickel).
Masai further teaches when the main conductive film (i.e., second conductive layer) has a thickness of 10 µm, a thickness of the sub-conductive film (i.e., first conductive layer) should be 0.15 µm or more ([0073])) (corresponding to the first conductive layer has a thickness in a range of from about 5 microns to about 20 microns and the second conductive layer has a thickness in a range of from about 0.1 micron to about 10 microns). FIGS. 1, 4-5, 13-14 and 16 all show a thickness ratio of the sub-conductive film being to main conductive film being 1:1 (corresponding to the first conductive layer and the second conductive layer have a thickness ratio in a range of from about 10:1 to about 1:1).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Masai further teaches the seed layer including the electrode film made of Cu can be formed by sputtering ([0057]; [0064]). Given that the Cu film of the seed layer of Masai is substantially identical to the present claimed seed layer in composition, structure and produced by a substantially identical process, it is clear that the Cu film would inherently have a tensile stress with respect to the substrate.
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). See MPEP 2112.01 (I).
Masai further teaches the conductive film includes the main conductive film (i.e., Ni layer having a tensile stress) and the sub-conductive film (i.e., Cu layer having a compressive stress), laminated in this order repeatedly from the side near the substrate (claim 5; [0025]; [0086]). Alternatively, the conductive film is a laminated structure in which the sub-conductive film and the main conductive film are laminate in this order from the side near the substrate (claim 6). Therefore, it is clear the composites substrate includes at least the following layers in the following order the substrate, the adhesion layer made of Ti, the film made of Cu having a tensile stress, the main conductive film, the sub-conductive film of Cu having a compressive stress, the main conductive film of Ni having a tensile stress and the sub-conductive film or the substrate, the adhesion layer made of Ti, the film made of Cu having a tensile stress, the sub-conductive film of Cu having a compressive stress and the main conductive film of Ni having a tensile stress (corresponding to the first type of stress is tensile stress and the second type of stress is compressive stress).
In reference to claims 7 and 14, Masai teaches the limitations of claim 1 and claim 13, as discussed above. Masai teaches the seed film is formed via a sputtering method ([0064]) (corresponding to the adhesion layer and the seed layer comprises sputtered coatings).
Although Masai does not explicitly teach the conductive film is electroless plated coating as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Masai meets the requirements of the claimed product, Masai clearly meets the requirements of the present claim.
In reference to claim 8-9 and 15-16, Masai teaches the limitations of claim 1 and claim 13, as discussed above. Masai teaches the conductive film is a laminated structure including the main conductive film and the sub-conductive film, wherein the main conductive film and sub-conductive film are repeatedly laminated ([0025]; [0058]; [0089]) (corresponding to one or more additional pairs of alternating layers of the first conductive layer and the second conductive layer). Masai further teaches the number of repeating layers is set freely in one or more ranges, such as two ([0089]) (corresponding to the layered structure comprising from 1 to 4 additional pairs of alternating layers of the first conductive layer and the second conductive layer).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 13 above, and further in view of Tsuchida (JP 2019-102572).
The Applicant has provided a copy of JP 2019-102572 with the IDS filed 02/12/2024. It is noted that when utilizing JP 2019-102572, the disclosures of the reference are based on US 2020/0273763 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to JP 2019-102572are found in US 2020/0273763.
In reference to claim 19, Lin teaches the limitations of claim 13, as discussed above.
Lin does not explicitly teach the electroless plated nickel layer comprises phosphorous having a content of from about 0 to about 20 molar%, as presently claimed.
Tsuchida teaches a glass core including a glass plate and a plurality of layers thereon ([0012]). An electroless nickel plating layer is disposed on the substrate and contains phosphorous (P) ([0066]). The P content in the plating film is 0.1 mass% or more and less than 5 mass% ([0066]). When the P content is in the above range glass corrosion and cracking can be prevented ([0067]).
In light of the motivation of Tsuchida, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include 0.1 mass% or more and less than 5 mass% of P in the nickel layer of Lin, in order to ensure the glass substrate is not subject to corrosion or cracking, and thereby arriving at the presently claimed invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Masai as applied to claim 13 above, and further in view of Tsuchida.
In reference to claim 19, Masai teaches the limitations of claim 13, as discussed above.
Masai does not explicitly teach the main conductive film comprises phosphorous having a content of from about 0 to about 20 molar%, as presently claimed.
Tsuchida teaches a glass core including a glass plate and a plurality of layers thereon ([0012]). An electroless nickel plating layer is disposed on the substrate and contains phosphorous (P) ([0066]). The P content in the plating film is 0.1 mass% or more and less than 5 mass% ([0066]). When the P content is in the above range glass corrosion and cracking can be prevented ([0067]).
In light of the motivation of Tsuchida, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include 0.1 mass% or more and less than 5 mass% of P in the nickel conductive film of Masai, in order to ensure the glass substrate is not subject to corrosion or cracking, and thereby arriving at the presently claimed invention.
Response to Arguments
In response to amended claim 13, the previous 35 USC 112(b) rejections of record are withdrawn.
In response to amended claim 1, which now requires a second conductive layer disposed directly on and contacting the first conductive layer, it is noted that Tsuchida, alone, no longer meets the claimed limitations. Rather, as the Applicant notes in the Remarks filed 05/08/2026 the electroless nickel plating layer (i.e., second conductive layer) is not directly on the first electrolytic copper plating layer (i.e., first conductive layer). Therefore, the previous 35 USC 102 rejections over Tsuchida are withdrawn. However, the amendment necessitates a new set of rejections, as set forth above.
Applicant primarily argues:
“However, Masai fails to teach sub-conductive film 32 (the alleged ‘first conductive layer’) as having a thickness ‘from about 5 microns to about 20 microns,’ as recited in claim 1. Instead, sub-conductive film 32 of Masai appears to have much lower thickness values. In particular, Masai discloses sub-conductive film 32 as having a thickness T2 of only 0.15 microns. Masai at ¶ 73. In another example, Masai discloses sub-conductive film 32 as having a thickness T2 from 0.18750 microns to 0.28125 microns, which is also well below the claimed range of ‘from about 5 microns to about 20 microns.’ In fact, Masai fails to teach the thickness T2 as being within the claimed range of ‘from about 5 microns to about 20 microns.’ Thus, Masai fails to have rendered obvious this claimed thickness.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Masai teaches the thickness of the sub-conductive film should be T2 = 0.15 µm or more at [0073]. Further, Masai teaches the product of the values of the internal stress F1 and thickness T1 of the main conductive film should be below the product of the values of the internal stress F2 and the thickness T2 of the sub-conductive film (i.e., F1*T1 ≤ F2*T2, namely F1*T1/F2*T2 ≤ 1.0) ([0072]; [0079]).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Additionally, FIG. 14 and FIG. 16 show that main conductive layer and sub-conductive layer are present in a 1:1 ratio. Therefore, when main conductive film 31 has a thickness T1 of 10 µm, T2 can also be 10 µm which satisfies T2 ≥ 0.9*D*T1/[200*(0.7-P)] ≥ 0.15 and F1*T1/ F2*T2 ≤ 1.0. Thus, Masai teaches a thickness of the sub-conductive film which overlaps the presently claimed thickness.
Therefore, Applicant's arguments filed 05/08/2026 have been fully considered but they are not persuasive.
Conclusion
The prior art made of record and not relied upon, namely Tsuchida (WO 2018/105618 English equivalent US 2020/0343199), Morita et al. (US 2017/0047302) and Miyauchi et al. (JP H07-297611), is considered pertinent to applicant's disclosure. However, the rejections using these references would be cumulative to the rejections of record set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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, Humera Sheikh can be reached at (571) 272-0604. 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.
/MARY I OMORI/Primary Examiner, Art Unit 1784
Prosecution Insights