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 .
RESPONSE TO AMENDMENT
Claims 1, 2, 5, 6, and 9 are pending in the application, claims 5 and 6 are withdrawn from consideration. Claims 3, 4, 7, and 8 have been cancelled. Claim9 has been added.
Amendments to the claims 1, 2, 5, and 6, filed on 26 February 2026, have been entered in the above-identified application.
Answers to Applicants' Arguments
Applicants' arguments in the response filed 26 February 2026, regarding the double patenting rejections made of record over Uchida'242, have been fully considered but are deemed unpersuasive.
Applicants argue that Uchida'242 does not recite or otherwise render obvious the feature of "to seal between". The examiner respectfully disagrees. In the instant case, because the claims of Uchida'242 recites "hermetically joined", it is considered to teach the claimed limitation.
Applicants' arguments in the response filed 26 February 2026, regarding the double patenting rejections made of record over Uchida'353, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
Applicants' arguments in the response filed 26 February 2026, regarding the 35 U.S.C. §112 rejections made of record, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
Applicants' arguments in the response filed 26 February 2026, regarding the 35 U.S.C. §102 rejections made of record over Kobayashi, have been fully considered but are deemed unpersuasive.
Applicants argue that Kobayashi does not explicitly or inherently disclose "a base layer composed of accumulated debris particles" or that "resin filled in gaps ... until reaching the base layer". The examiner respectfully disagrees. In the instant case, applicants fail to provide a sufficient argument contesting why Kobayashi would not inherently possess the claimed features. See MPEP §2112(V). The applicants arguments amounting to a mere general allegation that the claims define a patentable invention without specifically providing proof that the features would not be inherently present in the cited prior art.
Applicants further argue that the height of the nano columnar bodies disclosed by Kobayashi ranges from 1 nm to 500 nm and is so wide that a person having ordinary skill in the art would not have derived the claimed range of "an average height of 84 nm or more" from the such a wide range. The examiner respectfully disagrees. In the instant case, the claimed invention recites that the "nano columnar bodies" have a range of "84 nm or more", which would imply an average height in the nanoscale range of 84 nm to less than 1 µm (or more specifically, less than 900 nm, in that it is an average height). Kobayashi teaches that the nano columnar bodies have an average height of between 1 nm and 500 nm ([0015], [0017], [0019], [0047], and [0048] of Kobayashi); which is sufficiently specific to anticipate the claimed range of --84 nm or more [and less than 1000 nm]--. See MPEP §2131.03(II). As such, the ranges are sufficiently overlapping to an extent that a person of ordinary skill in the art would have selected a value that falls in the claimed range.
Therefore, in light of the applicants' arguments, the examiner contends that the maintained double patenting rejections over Uchida'242 and the 35 U.S.C. §102 rejections over Kobayashi are still valid.
New and Repeated Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Double Patenting
Claims 1, 2, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 13, and 15 of copending Application No. 18/969,242 (reference application) (referred to herein as "Uchida'242"). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a metal-resin composite joining region.
Regarding Instant claim 1: Uchida'242 claims a metal-resin composite, comprising: a resin member; and a metal member having a surface with a joining region joined to the resin member to seal between a first space and a second space in combination with the resin member, wherein the joining region includes a roughened region formed on the surface, the roughened region comprising: a base layer composed of accumulated debris particles; and a column group layer composed of nano columnar bodies standing adjacent to and spaced from one another in two dimensions, the nano columnar bodies being formed of the debris particles bonding to one another in a form of strings of beads extending from the base layer in a height direction, the nano columnar bodies in the roughened region have an average height of 84 nm or more, and the resin member is made of resin filled in gaps between the nano columnar bodies until reaching the base layer (claims 1, 3, 13, and 15 of Uchida'242).
(Note: Uchida'242 claims that the nano columnar bodies in the roughened region have a height of 50 nm or more (i.e., an average height of greater than 50 nm); which overlaps the presently claimed range of --an average height of 84 nm or more--. Uchida'242 differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Uchida'242, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05.)
Regarding Instant Claim 2: Uchida'242 claims that the first space is located outside the joining region and the second space is located inside the joining region, the joining region has a ring shape, and the roughened region has a ring shape corresponding to the shape of the joining region (claims 1 and 3 of Uchida'242).
Regarding Instant Claim 9: Uchida'242 claims that the metal member is made of aluminum (claims 1, 3, 13, and 15 of Uchida'242).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. (US 2016/0207148 A1).
Regarding Claim 1: Kobayashi teaches a composite molded body of a metal member and a resin member, wherein a semiconductor device (ref. #1) includes a lead frame (ref. #2) corresponding to the metal member, a molded resin (ref. #2) corresponding to the resin member, and an IC ship (ref. #3) mounted on a surface of the lead frame and sealed by the molded resin so as to cover the IC chip, wherein the lead frame includes a base (ref. #21) and a metal thin film (ref. #22) (figures 1 to 4, [0010]-[0012], [0015]-[0016], and [0038]-[0040] of Kobayashi). (The space occupied by the IC chip of Kobayashi is considered equivalent to the claimed "second space" located inside the joining region (i.e., bounded by the interface between the resin member and the metal member). The external space of Kobayashi is considered equivalent to the claimed "first space" located outside the joining region (i.e., not bounded by the interface between the resin member and the metal member).) Kobayashi also teaches that regions of fine unevenness (ref. #22C) are formed on the surface (ref. #22A) of the metal thin film by a laser beam with is pulse-oscillated, wherein the fine unevenness have a size in which an average height of the convex portions is in a range of between 1 nm and 500 nm ([0015], [0017], [0019], [0047], and [0048] of Kobayashi); which is sufficiently specific to anticipate the claimed range of --84 nm or more--. See MPEP §2131.03(II).
Kobayashi teaches the claimed metal-resin composite, but does not explicitly recite that --the roughened region comprising: a base layer composed of accumulated debris particles; and a column group layer composed of nano columnar bodies standing densely in two dimensions, the nano columnar bodies being formed of the debris particles bonding to one another in the form of strings of beads extending from the base layer in a height direction, and the resin filled in gaps between the nano columnar bodies until reaching the base layer--. However, Kobayashi uses the same materials and process as applicants to form the roughened region (i.e., a metal member irradiated with a pulse laser having an energy density to produce a roughened region having an average height of 84 nm or more but less than 1000 nm; see ([0010]-[0019], [0038]-[0043], and [0047]-[0048]) of Kobayashi and ([0010], [0037], [0072]-[0075], [0083], and [0088]) of the published specification). Therefore, it is the decision of the examiner that the roughened region of Kobayashi inherently possesses a base layer composed of accumulated debris particles, and a column group layer composed of nano columnar bodies standing densely in two dimensions, the nano columnar bodies being formed of the debris particles bonding to one another in the form of strings of beads extending from the base layer in a height direction, and the resin filled in gaps between the nano columnar bodies until reaching the base layer. See MPEP §2112.
Regarding Claim 2: Kobayashi teaches that the first space is located outside the joining region and the second space is located inside the joining region, the joining region has a ring shape, and the roughened region has a ring shape corresponding to the shape of the joining region (figures 9 to 10 of Kobayashi). (The space occupied by the IC chip of Kobayashi is considered equivalent to the claimed "second space" located inside the joining region (i.e., bounded by the interface between the resin member and the metal member). The external space of Kobayashi is considered equivalent to the claimed "first space" located outside the joining region (i.e., not bounded by the interface between the resin member and the metal member).)
Conclusion
Applicants' 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 Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
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