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 the Claims
Claims 1-8 are pending wherein claims 1, 3 and 6 are amended.
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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ingham et al. (US 2008/0292492).
In regard to claims 1 and 3, Ingham et al. (‘492) discloses tin based solder alloys that would be used for ball grid array having compositions relative to that of the instant invention as set forth below (abstract, [0011-0030] and [0035]).
Element
Instant Claim
(weight percent)
Ingham et al. (‘492)
(weight percent)
Overlap
Ag
1 – 1.3
0.1 – 1.5
1 – 1.3
Cu
0.60 – 0.75
0.6 – 0.8
0.60 – 0.75
Bi
1.5 – 2.5
0.08 – 3
1.5 – 2.5
Ni
0.03 – 0.10
0.02 – 0.3
0.03 – 0.1
Sn
Balance
Balance
Balance
The Examiner notes that the amounts of silver, copper, bismuth and nickel for the tin based alloys disclosed by Ingham et al. (‘492) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, bismuth and nickel from the amounts disclosed by Ingham et al. (‘492) because Ingham et al. (‘492) discloses the same utility throughout the disclosed ranges.
In regard to claims 2 and 4, Ingham et al. (‘492) discloses 0 to 0.1 mass percent germanium, which encompasses the range of the instant invention [0016].
In regard to claim 6, Ingham et al. (‘492) discloses tin based solder alloys that would be used for ball grid array arranged between two substrates (upper and lower electronic components) having compositions relative to that of the instant invention as set forth below (abstract, [0003-0005], [0011-0030] and [0035]).
Element
Instant Claim
(weight percent)
Ingham et al. (‘492)
(weight percent)
Overlap
Ag
1.0 – 1.3
0.1 – 1.5
1.0 – 1.3
Cu
0.60 – 0.75
0.6 – 0.8
0.60 – 0.75
Bi
1.5 – 2.5
0.08 – 3
1.5 – 2.5
Ni
0.03 – 0.10
0.02 – 0.3
0.03 – 0.1
Sn
Balance
Balance
Balance
The Examiner notes that the amounts of silver, copper, bismuth and nickel for the tin based alloys disclosed by Ingham et al. (‘492) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, bismuth and nickel from the amounts disclosed by Ingham et al. (‘492) because Ingham et al. (‘492) discloses the same utility throughout the disclosed ranges.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ingham et al. (US 2008/0292492) as applied to claim 4, and further in view of Kim et al. (Thermal diffusivity of Sn-Ag-Cu-based, Pb-free, micro-and nano-sized solder balls).
In regard to claim 5, Ingham et al. (‘492) discloses forming tin-based alloy solder balls as set forth above, but Ingham et al. (‘492) does not specify wherein the solder balls would have a particle diameter of 10 to 780 micrometers.
Kim et al. teaches that as the solder ball diameter within the range of 170 nm to 140 µm increases so too does the thermal diffusivity of the solder ball (Table 1 and Conclusions). MPEP 2144.05 II.
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to modify the tin-based solder balls as disclosed by Ingham et al. (‘492), within a range of 170 nm to 140 µm, as disclosed by Kim et al., in order to achieve the desired thermal diffusivity, as disclosed by Kim et al. since solder ball size is a result-effective variable in achieving the desired thermal diffusivity (Table 1 and Conclusions). MPEP 2144.05 II.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shimodaira (US 2017/0179012) or Nobori (US 6,864,574) in view of Ingham et al. (US 2008/0292492).
In regard to claims 6-7, Shimodaira (‘012) discloses a semiconductor device with a wiring substrate including an electrode (pad), a solder resist, and an opening that exposes the electrode [0003]. Shimodaira (‘012) further discloses forming bumps on the wiring substrate and mounting a semiconductor element, which would inherently have an electrode, on the bumps [0019]. The wiring substrate also includes a lower surface on which bumps are formed to connect to another substrate such as a motherboard with an external connection [0020]. However, Shimodaira (‘017) does not specify the composition of the solder alloy bumps.
Nobori (‘574) discloses a pillared electrode where there is an upper base material with a copper electrode and semiconductor below with a first electrode above and an upper face second electrode with a tin-silver-copper based solder in between the upper materials and the semiconductor material/electrodes below (Figures 14-15 and columns 13-15). However, Nobori (‘574) does not specify the specific composition of the tin-silver-copper based solder.
Ingham et al. (‘492) discloses tin based solder alloys that would be used for ball grid array arranged between two substrates (upper and lower electronic components) having compositions relative to that of the instant invention as set forth below (abstract, [0003-0005], [0011-0030] and [0035]).
Element
Instant Claim
(weight percent)
Ingham et al. (‘492)
(weight percent)
Overlap
Ag
0.8 – 1.3
0.1 – 1.5
0.8 – 1.3
Cu
0.60 – 0.75
0.6 – 0.8
0.60 – 0.75
Bi
1.5 – 2.5
0.08 – 3
1.5 – 2.5
Ni
0.03 – 0.10
0.02 – 0.3
0.03 – 0.1
Sn
Balance
Balance
Balance
The Examiner notes that the amounts of silver, copper, bismuth and nickel for the tin based alloys disclosed by Ingham et al. (‘492) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, bismuth and nickel from the amounts disclosed by Ingham et al. (‘492) because Ingham et al. (‘492) discloses the same utility throughout the disclosed ranges.
Ingham et al. (‘492) further discloses wherein using the disclosed tin-based solder alloys would provide improved mechanical properties and oxidation resistance [0010].
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to modify the semiconductor device (package), as disclosed by Shimodaira (‘012) or the pillared electrode where there is an upper base material with a copper electrode and semiconductor below with a first electrode above and an upper face second electrode with a tin-silver-copper based solder in between the upper materials and the semiconductor material/electrodes below, as disclosed by Nobori (‘574), by using the tin-based solder alloys, as disclosed by Ingham et al. (‘492), in order to provide improved mechanical properties and oxidation resistance, as disclosed by Ingham et al. (‘492) [0010].
In regard to claim 8, Ingham et al. (‘492) discloses using organic coatings (OSP) on substrates in order to improve wetting [0008].
Response to Arguments
Applicant's arguments filed July 9, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that Ingham et al. (‘492) explicitly teaches away from the claimed high bismuth composition, and the claimed composition of narrowed ranges is critical and produces unexpected results. Ingham et al. (‘492) states that higher levels of bismuth lower the melting point and reduce the ductility of the alloy making fabrication into wire much more difficult and for these reasons, the content of bismuth in the alloy preferably does not exceed 1 weight percent and every working example of Ingham et al. (‘492) is 0.25 weight percent or less.
In response, the Examiner notes that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123 II. Since Ingham et al. (‘492) discloses 0.08 to 3 weight percent and therefore establishes prima facie obviousness. MPEP 2144.05 I.
Second, the Applicant primarily argues that the narrowed silver ranges further distances claims 1, 3 and 6 from the express references of Ingham et al. (‘492) and states that the content of silver in the alloy preferably does not exceed 1.1 weight percent, more preferably does not exceed 0.5 weight percent still more preferably it does not exceed 0.4 weight percent and the amended silver of 1 to 1.3 weight percent lies at and above the maximum silver content that Ingham et al. (‘492) does not direct a person having ordinary skill in the art toward the claimed combination.
In response, the Examiner notes that Ingham et al. (‘492) discloses 0.1 to 1.5 weight percent silver, which encompasses the range of the instant invention. Applicant has failed to demonstrate the criticality of the claimed range over the prior art ranges. MPEP 716.02(d)(II).
Third, the Applicant primarily argues that Kim et al. fails to teach the claimed solder alloy composition and Kim et al. corresponds to a conventional SAC305-type alloy having a high Ag content of 3.0 wt%.
In response, Kim et al. teaches that as the solder ball diameter within the range of 170 nm to 140 µm increases so too does the thermal diffusivity of the solder ball. It would have been obvious to make the make the solder of Ingham et al. (‘492) into a ball having a diameter of 170 nm to 140 µm in order to increase the thermal diffusivity.
Fourth, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Applicant's 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 Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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