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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 7, in the reply filed on 10 February 2026 is acknowledged.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, and 5 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Roth (EP 3,361,839 A1) in view of Imoto (JP 11-195624 A, referencing a translation thereof provided with this Office Action).
Regarding claim 1, Roth discloses a glass layer, wherein the glass layer has cutting grooves (“brittle-facture plate”, “brittle fracture layer” comprising a “glass plate” or “glass layer”, e.g. “brittle-fracture plate”, “brittle fracture layer” 2: e.g. Fig. 1 – 4; ¶¶ [0001], [0011] – [0063]).
Although Roth is not explicit as to a glass core laminate comprising the above glass layer and an insulating layer laminated on upper and lower surfaces of the glass layer, wherein the glass layer has cutting grooves defined in advance along a singulation cutting line before the insulating layer is laminated on the upper and lower surfaces (or the implied product of this process, per the Claim Interpretation section above), these features would have been obvious in view of Imoto.
Imoto provides an insulating layer laminated on upper and lower surfaces of a substrate (e.g. Fig. 6; ¶¶ [0040], [0041]), wherein the substrate cutting grooves defined in advance (e.g. ¶ [0021]) along a singulation cutting line before the insulating layer is laminated on the surface (“grooves” 2-1 to 2-4 are formed in “Si substrate” 1 before lamination with the “insulating film” 3: e.g. Fig. 1 – 6; ¶¶ [0001], [0014] – [0051]). Imoto discloses providing such an insulating layer over said cutting grooves in this manner advantageously allows singulation with great accuracy, reliability, and speed (e.g. ¶¶ [0001], [0013], [0022], [0048] – [0050]).
Imoto primarily relates to silicon substrates (“Si substrate”, e.g. “Si substrate” 1: e.g. Fig. 1 – 6; ¶¶ [0014], [0018] – [0021], [0024], [0026], [0027], [0030], [0033], [0034], [0036], [0037], [0039], [0041], [0043] – [0047], [0049]). However, Imoto also notably acknowledges their disclosure applies to other substrates, e.g. ceramic substrates such as alumina (e.g. ¶ [0045]). Given Roth discloses alternative embodiments where, instead of a glass layer, a ceramic layer such as alumina is used (e.g. ¶ [0014]), there is an establish equivalency in the art for substrate or layer materials which would have suggested Imoto’s disclosure can be equally applied to a glass layer as Roth discloses.
This equivalency particularly arises because both Roth and Imoto relate to singulation processes used to make circuits (Roth: e.g. ¶¶ [0002], [0004], [0005], [0015], [0017], [0019], [0020], [0026], [0042], [0043], [0057], [0059], [0062]; Imoto: e.g. ¶¶ [0002], [0022], [0050]).
Accordingly, it would have been obvious to modify Roth’s glass layer to have an insulating layer laminated on upper and lower surfaces of the glass layer, wherein the glass layer has cutting grooves defined in advance along a singulation cutting line before the insulating layer is laminated on the upper and lower surfaces as Imoto suggests. The motivation for this modification is to ensure great accuracy, reliability, and speed in the singulation process.
Modifying Roth in this manner thus forms a glass core laminate.
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). MPEP § 2112.01, I.
The timing of the lamination process as Imoto discloses for forming cutting grooves is the same as claimed in claim 1. Accordingly, a glass core laminate as Roth and Imoto collectively disclose is formed by a substantially identical process with substantially identical materials to that claimed, and a prima facie case of obviousness is established.
Regarding claim 2, in addition to the limitations of claim 1, the cutting grooves Roth discloses extend in a thickness direction of the glass layer (e.g. ¶¶ [0015], [0016], [0039]). Given Imoto also discloses the cutting grooves extend in a thickness direction of their substrate (e.g. Fig. 1 – 6; ¶ [0047]), the modifications to form a glass core laminate as discussed in the 35 U.S.C. 103 rejection of claim 1 in view of Roth and Imoto would have been understood to likewise have the cutting grooves extend in a thickness direction of the glass layer.
While Roth and Imoto are note explicit as to the cutting grooves being particularly defined as a transformable portion extending in a thickness direction of the glass layer is defined by irradiating a laser beam to the glass layer and as the transformable portion is etched by immersing the glass layer on which the transformable portion is defined in an etching solution, these are limitations defining claim 2 as a product-by-process claim.
“[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). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
In the case of claim 2, no process parameters are defined for either the irradiating or the immersing. The examiner therefore considered the structures of the cutting grooves as required in claim 1, i.e. the base claim of claim 2, sufficient for describing the product itself. Accordingly, the glass core laminate Roth and Imoto disclose is understood to satisfy the requirements of claim 2.
Regarding claim 5, in addition to the limitations of claim 1, Roth discloses the singulation cutting line comprises:
a plurality of first cutting lines that, to define a horizontal side of a package unit, extend in a horizontal direction and are spaced apart by a vertical width of the package unit (“horizontal predetermined fracture line” 4: e.g. Fig. 1 – 4; ¶¶ [0037], [0038], [0052], [0056]); and
a plurality of second cutting lines that, to define a vertical side of the package unit, extend in a vertical direction and are spaced apart by a horizontal width of the package unit (“vertical predetermined fracture line” 5: e.g. Fig. 1 – 4; ¶¶ [0037], [0038], [0052], [0056]),
wherein starting and ending points of each of the first cutting lines and the second cutting lines are disposed away from an edge side surface of the glass layer without extending to the edge side surface of the glass layer (implied due to a transition, and requisite material, desired from the “line” 4 to the edge or an aperture: e.g. ¶¶ [0017], [0043]).
Regarding claim 6, in addition to the limitations of claim 1, Roth discloses the singulation cutting line comprises a plurality of unit cutting lines prepared to correspond to a shape of a package unit and spaced apart at predetermined intervals in the horizontal and vertical directions of the package unit (to form “single substrates” 3, 12, 15, 19: e.g. Fig. 1 – 6; ¶¶ [0011], [0015] – [0017], [0019] – [0022], [0027], [0037], [0040] – [0044], [0048] – [0052], [0054] – [0056], [0058], [0059], [0061]).
Regarding claim 7, in addition to the limitations of claim 6, Roth discloses the unit cutting lines have a curved corner area (e.g. Fig. 3; ¶¶ [0048] – [0051]).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Roth and Imoto as applied to claim 1 above, and further in view of Lee (US 2011/0306167 A1).
Regarding claim 3, although Roth and Imoto are not explicit as to:
the glass layer further having a through-hole for electrical connection between layers of the glass core laminate;
the through-hole being defined as a transformable portion extending in a thickness direction of the glass layer is defined by irradiating a laser beam to the glass layer and as the transformable portion is etched by immersing the glass layer on which the transformable portion is defined in an etching solution; and
the cutting grooves being defined together when the through-hole is defined,
these features would have been obvious in view of Lee.
Lee discloses a “semiconductor chip”, e.g. “semiconductor chip” 110, comprising a through-hole for electrical connection between opposing surfaces of the “semiconductor chip” (“semiconductor chip” 110 with “through-hole via” 161: e.g. Fig. 1 – 16; ¶¶ [0007] – [0072]). Lee provides such a through-hole for reducing the size of a “semiconductor package” comprising the “semiconductor chip” and to increase signal transfer speed (e.g. ¶ [0041]).
Accordingly, it would have been obvious to modify Roth’s glass layer to further have a through-hole for electrical connection between layers of the glass core laminate, the motivation being to reduce the size of singulated parts and to increase signal transfer speed as Lee suggests.
Although Roth, Imoto, and Lee are not explicit as to the through-hole being defined as a transformable portion extending in a thickness direction of the glass layer is defined by irradiating a laser beam to the glass layer and as the transformable portion is etched by immersing the glass layer on which the transformable portion is defined in an etching solution; and the cutting grooves being defined together when the through-hole is defined, these features define claim 3 as a product-by-process claim.
“[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). See MPEP § 2113, I.
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP § 2113, I.
In the case of claim 3, no process parameters are defined for either the irradiating or the immersing. The defining of the cutting grooves and the through-hole being together as claim 3 requires implies a structure similar to that for claim 1 between the cutting grooves and the insulating layer.
Imoto makes a point to form their cutting grooves in advance of lamination of the insulating layer as this help reliability of forming the cutting grooves and to improve processing speed (e.g. ¶¶ [0021], [0051]). Accordingly, defining the through-hole Lee suggests together with the cutting grooves, i.e. before lamination with the insulating layer, would have been understood to exhibit the same benefits as Imoto discloses for the cutting grooves and therefore would have been obvious to provide a through-hole.
The examiner therefore considered the structures of the cutting grooves and the through-hole as required in claim 3 sufficient for describing the product itself. Accordingly, the glass core laminate Roth, Imoto, and Lee disclose is understood to satisfy the requirements of claim 3.
Regarding claim 4, although Roth, Imoto, and Lee are not explicit as to the through-hole and the cutting grooves being defined together as at least one of the followings is set differently: power of the laser beam for defining the through-hole and the cutting grooves, respectively; a focusing position of the laser beam for defining the through-hole and the cutting grooves, respectively; and an etching time for defining the through-hole and the cutting grooves, respectively,
these are limitations define claim 4 as a product-by-process claim.
Referring to the portions of MPEP § 2113, I, as cited for claim 3 previously, in the case of claim 4, no process parameters are defined for the power of the laser beam, the focusing position for the laser beam, or the etching time. The examiner therefore considered the structures of the cutting grooves and the through-hole as required in claim 3, i.e. the base claim of claim 4, sufficient for describing the product itself. Accordingly, the glass core laminate Roth, Imoto, and Lee disclose is understood to satisfy the requirements of claim 4.
Conclusion
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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