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 .
Status of Application
Claims 1-10 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive. Applicant argues that Fujii fails to teach or suggest how the outflow of the ink for an insulating layer, applied onto an electronic component, and the deterioration of jettability of the ink for an insulating layer are affected in relation to the viscosity of the insulating ink. Further, Applicant states that Widder does not teach that the temperature of the insulating layer must be higher than that of the shielding layer. However, the Examiner maintains that both Widder and Seipel make obvious that the ink jetting temperature is a result-effective variable. Therefore, the Examiner maintains that one would look to optimize the jetting process to yield an optimal final product. The Examiner maintains that this optimization would yield the jetting temperature difference as claimed. Furthermore, in response to applicant's argument that the prior art fails to teach how the outflow of the ink for the insulating layer and the jettability of the ink for the insulating layer are affected in relation to the viscosity of the ink, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant also argues that there is a synergistic effect achieved utilizing the claimed processing conditions. However, the evidence pointed to is not commensurate in scope with the claims (the evidence is to specific ink formulations which do not support the same result for any of the formulations encompassed by the claims). Therefore, Applicant’s arguments with respect to unexpected results is moot. The rejections are maintained as presented below.
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.
1. Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et al. (JP2004172176, reference is made to the provided English translation) in view of Fujii et al. (WO 2022/070593, reference is made to U.S. PGPUB No. 2023/0250307 as an English equivalent) and Widder et al. (U.S. Pat. No. 5475405).
I. Regarding claims 1, 2 and 4-10, Iguchi teaches a method of manufacturing an electronic device (abstract) comprising: preparing an electronic substrate including a wiring board (abstract and 0019), an electronic component disposed on the wiring board (0019 and element 12, Figure 1), and a ground electrode (0021 and element 15a, Figure 1). Iguchi teaches forming an insulating layer (element 14, Figure 1, 0021 and 0031) on the electronic component and then forming an electromagnetic wave shielding layer (element 19, Figure 1) over the insulating layer and on and electrically connected to the ground electrode to obtain an electronic device (0031). Iguchi fails to teach forming the insulating layer and shielding layer by jetting an ink as claimed.
First, Fujii teaches an ink set containing an insulating ink and a conductive ink (abstract). Fujii teaches that the insulating ink can be used for insulating electronic components on a chip or base material (0195) and the conductive ink can be used over the insulating layer (0195). Fujii teaches that the insulating ink is active energy ray curable (0034), has a viscosity of 3-60 mPa•s at a temperature of 25 ºC (0109 and note that overlapping ranges are prima facie evidence of obviousness), and that the ink includes a monomer, such as phenoxyethylene glycol (meth)acrylate (0065, and note that this monomer is a monofunctional acrylate with a molecular weight greater than 200 and includes a ring structure). Fujii teaches the conductive ink comprising a metal salt or a metal complex (0111). Fujii teaches applying the insulating ink by jetting from an inkjet head while simultaneously irradiating with an active energy ray with the substrate at room temperature (0297, thereby meeting the limitation of start of irradiation within 0.5 seconds of application) and relatively moving the substrate and the inkjet head with respect to each other (0297). Fujii also teaches applying the conductive ink by jetting from an ink jet head (0298) at a resolution of 1270 dpi (0298) and application to a substrate pre-heated at a temperature of 50 ºC (0298, and note this temperature is greater than room temperature by 25 ºC or more, where room temperature is the temperature at which the ink is jetted). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Iguchi’s process by applying the insulating layer and wave shielding layer using Fujii’s ink set and ink jetting in the manner as disclosed by Fujii. One would have been motivated to make this modification as Fujii teaches that using ink and printing in this manner yields improved conductivity (0005-0007).
Iguchi in view of Fujii fail to teach that the jetting temperature for an insulating layer is higher than a jetting temperature for the electromagnetic wave shielding layer by 10-40 ºC and that the jetting temperature of the ink for the electromagnetic wave shielding layer is 10-50 ºC. However, Widder teaches controlling jetting temperature of an inkjet ink (abstract) and teaches that the jetting temperature is a result-effective variable that will alter the drop volume of the ink being deposited (column 1, lines 21-34). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range of the jetting temperature in the jetting of the ink for the insulating layer is 10-40 ºC higher than the jetting temperature of the conductive wave shielding layer which is in a range of 10-50 ºC through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
II. Regarding claim 3, Iguchi in view of Fujii and Widder teach all the limitations of claim 1, including moving the inkjet head with respect to the substrate (see above). However, Iguchi in view of Fujii and Widder fail to explicitly teach the speed as claimed. However, the speed at which the relative movement is made is a result-effective variable that will alter the speed at which the insulating layer is applied as well as alter the thickness of the layer and the resolution and quality of the layer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
2. Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi in view of Fujii and Seipel et al. (“Effect of physical parameters and temperature on the piezo-electric jetting behavior of UV-curable photochromic inks”).
I. Regarding claims 1, 2 and 4-9, Iguchi teaches a method of manufacturing an electronic device (abstract) comprising: preparing an electronic substrate including a wiring board (abstract and 0019), an electronic component disposed on the wiring board (0019 and element 12, Figure 1), and a ground electrode (0021 and element 15a, Figure 1). Iguchi teaches forming an insulating layer (element 14, Figure 1, 0021 and 0031) on the electronic component and then forming an electromagnetic wave shielding layer (element 19, Figure 1) over the insulating layer and on the ground electrode to obtain an electronic device (0031). Iguchi fails to teach forming the insulating layer and shielding layer by jetting an ink as claimed.
First, Fujii teaches an ink set containing an insulating ink and a conductive ink (abstract). Fujii teaches that the insulating ink can be used for insulating electronic components on a chip or base material (0195) and the conductive ink can be used over the insulating layer (0195). Fujii teaches that the insulating ink is active energy ray curable (0034), has a viscosity of 3-60 mPa•s at a temperature of 25 ºC (0109 and note that overlapping ranges are prima facie evidence of obviousness), and that the ink includes a monomer, such as phenoxyethylene glycol (meth)acrylate (0065, and note that this monomer is a monofunctional acrylate with a molecular weight greater than 200 and includes a ring structure). Fujii teaches the conductive ink comprising a metal salt or a metal complex (0111). Fujii teaches applying the insulating ink by jetting from an inkjet head while simultaneously irradiating with an active energy ray with the substrate at room temperature (0297, thereby meeting the limitation of start of irradiation within 0.5 seconds of application) and relatively moving the substrate and the inkjet head with respect to each other (0297). Fujii also teaches applying the conductive ink by jetting from an ink jet head (0298) at a resolution of 1270 dpi (0298) and application to a substrate pre-heated at a temperature of 50 ºC (0298, and note this temperature is greater than room temperature by 25 ºC or more, where room temperature is the temperature at which the ink is jetted). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Iguchi’s process by applying the insulating layer and wave shielding layer using Fujii’s ink set and ink jetting in the manner as disclosed by Fujii. One would have been motivated to make this modification as Fujii teaches that using ink and printing in this manner yields improved conductivity (0005-0007).
Iguchi in view of Fujii fail to teach that the jetting temperature for an insulating layer is higher than a jetting temperature for the electromagnetic wave shielding layer by 10-40 ºC. However, Seipel teaches that jetting temperature is a result-effective variable that will alter the jetting behavior of the ink (see Conclusion section). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range of the jetting temperature in the jetting of the ink for the insulating layer is 10-40 ºC higher than the jetting temperature of the conductive wave shielding layer through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
II. Regarding claim 3, Iguchi in view of Fujii and Seipel teach all the limitations of claim 1, including moving the inkjet head with respect to the substrate (see above). However, Iguchi in view of Fujii and Seipel fail to explicitly teach the speed as claimed. However, the speed at which the relative movement is made is a result-effective variable that will alter the speed at which the insulating layer is applied as well as alter the thickness of the layer and the resolution and quality of the layer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
III. Regarding claim 10, Iguchi in view of Fujii and Seipel make obvious claim 1 (see above), and Seipel teaches optimizing the jetting temperature within 25-40 ºC (see Visual Evaluation of ink jettability section). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Iguchi in view of Fujii and Seipel’s process by selecting the jetting temperature to be within 25-40 ºC as claimed as Seipel teaches that this range is a conventional range that can be utilized with a similar ink and a conventional inkjet apparatus and yields good ink jettability properties (see Conclusion section).
Conclusion
Claims 1-10 are pending.
Claims 1-10 are rejected.
THIS ACTION IS MADE FINAL. 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.
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/ROBERT S WALTERS JR/
May 11, 2026Primary Examiner, Art Unit 1717
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