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 .
Election/Restrictions
Applicant’s election of Group I Claims 1-7 in the reply filed on 5/21/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Applicant has stated that the election is made with traverse, but has failed to set forth the reasons why the restriction requirement is thought to be improper. A mere statement of traversal without a complete statement of the reasons thereof is considered incomplete.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and subsequent depending claims 2-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1-7 suffer from numerous 35 U.S.C. § 112(b) and claim structure deficiencies that render the scope of the claimed subject matter indefinite.
Claims 1 and 5: The phrase “and the like” in the limitation “connected to a semiconductor element and the like” is open-ended and completely undefined. It fails to distinctly limit the boundaries of what the electrodes are configured to connect to, rending the scope of the claim vague and indefinite.
The phrase “the inside thereof” lacks a clear, unambiguous antecedent basis. It is structurally unclear whether “thereof” refers back to the wiring board or to the insulating film, thereby obscuring the exact spatial boundaries and location of the internal structure.
Claim 1: The introductory phrase “A substrate with a support, the substrate including a support…” is circular and redundant. It creates ambiguity as to whether the support is a separate structural component supporting the substrate, or an inherent sub-component included within the substrate itself. The scope of the claim is indefinite.
Claim 5 recites the phrase “can be”, which renders the claim indefinite. The claim recites the phrase “can be”. The verb form "can" is inherently ambiguous and susceptible to more than one plausible construction. Specifically, one of ordinary skill in the art cannot determine with reasonable certainty whether this language imposes a mandatory structural limitation required to practice the invention, or if it merely expresses an optional capability, unintended use, or preferred embodiment.
Because the claim mixes definitive structural elements with permissive language, the metes and bounds of the claim scope are rendered unclear. A person having ordinary skill in the art is left to speculate whether the invention is limited to structures that actively possess and exhibit this feature, or if the invention encompasses embodiments that merely possess the potential to exhibit the feature without actually requiring it. Consequently, the scope of the claim does not provide clear notice to the public of what constitutes infringement
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) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Knickerbocker (US 20080217748 A1) in view of Watanabe et al. (US 20220359227 A1).
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CLAIM 1. Knickerbocker teaches substrate 8+1 with a support 9, the substrate 8+1 including a support 1 and a wiring board provided on the support (1 or 9), wherein the wiring board includes an insulating film 4 on the inside thereof configured by a first organic insulating resin; the wiring board has a first surface and a second surface each provided with electrodes that can be connected to a semiconductor element (Knickerbocker ¶5-11 - chip) and the like; at least one of an upper surface layer and a lower surface layer of the wiring board is provided with an insulating film 2 configured by a second organic insulating material; and the second organic insulating material 2 has a CTE lower than that of the first organic insulating material 4 (Knickerbocker ¶31 & Fig. 2- Knickerbocker teaches a low CTE reinforced insulating layer/layers for matching CTE of stacked structure to which a wiring board will be attached thereto.).
Knickerbocker is merely silent upon stating the organic insulating materials are specifically a “resin”. However, Knickerbocker discloses that they are organic insulating materials, such as polyimide. One of ordinary skill in the art would expect these organic insulating materials to be a resin because a resin is a well-known class of organic insulating materials commonly used in the art of electrical isolation.
This is supported by Watanabe et al., which explicitly teaches that microelectronic dielectric materials routinely comprise a “ any suitable photosensitive insulating resin such as PI (polyimide)” (¶120).
In view of MPEP §2144.04, a PHOSITA would find it obvious to select a known material within a known class of materials for its intended purpose. Selecting a specific organic resin to serve as Knickerbocker’s organic insulating layers amounts to nothing more than a routine choice of a familiar, industry-standard material that would perform its expected function and produce no unexpected results.
CLAIM 2. Knickerbocker in view of Watanabe teaches a substrate with a support, of claim 1, wherein the second organic insulating resin has a CTE of 40 ppm/K or lower (Knickerbocker ¶s 8-9, 11, 23, 25).
CLAIM 3. Knickerbocker in view of Watanabe teaches a substrate with a support, of claim 1, wherein the support is a glass substrate (Watanabe ¶88, ¶113 glass is a conventional substrate material, and would be a expected to be included in the broad “ceramic” genus as disclosed in Knickerbocker.)
CLAIM 4. Knickerbocker in view of Watanabe teaches a substrate with a support, of claim 1, wherein wiring in the wiring board or vias to connect portions of the wiring are made of copper or an alloy containing copper; and portions of a surface of the first or second organic insulating resin, with which the wiring or the vias are in contact, are provided with respective portions of a barrier metal layer (Knickerbocker ¶8-11 – Copper is a conventional conductive material selected for wiring in the microelectronic art.).
CLAIM 5. Knickerbocker in view of Watanabe teaches a substrate with a support, of claim 1, wherein portions of respective electrodes that can be connected to the semiconductor element and the like penetrate a second organic insulating layer which is an outermost layer (Knickerbocker Fig. 2).
CLAIM 6. Knickerbocker in view of Watanabe teaches a substrate with a support, of claim 1, wherein a release layer (e.g. solder balls) is arranged between the support and the wiring board; and an intermediate layer is arranged between the wiring board and the release layer (Knickerbocker Fig. 2 – Note: functional language does not impart any clear structural distinction. Solder may be reflowed inherently allowing the ability to “release”.).
CLAIM 7. Knickerbocker in view of Watanabe teaches a substrate with a support, of claim 1, wherein a filler-containing organic insulating resin 2 is not provided to regions in the first surface and the second surface of the wiring board, the regions being regions where electrodes to be connected to the semiconductor element and the like are provided (Knickerbocker Fig. 2 & ¶31).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARRETT J STARK whose telephone number is (571)272-6005. The examiner can normally be reached 8-4 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Manno can be reached at 571-272-2339. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JARRETT J. STARK
Primary Examiner
Art Unit 2822
6/16/2026
/JARRETT J STARK/ Primary Examiner, Art Unit 2898
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