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, Species 3, claims 1-10, in the reply filed on August 14, 2026 is acknowledged. Claims 11-13 have been withdrawn. Action on the merits is as follows:
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 and 3-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato et al. (Kato) (EP 3031789 A1).
In regards to claim 1, Kato (Figs. 1-5 and associated text) discloses a ceramic circuit substrate (item 1), comprising: a ceramic substrate (item 2); a metal circuit (item 3) located at one surface of the ceramic substrate (item 2), the metal circuit (item 3) having a thickness of not less than 1 mm (paragraphs 5, 23, 46); and a metal member (item 8) located at another surface of the ceramic substrate (item 2), the metal member (item 8) having a thickness of not less than 1 mm (paragraph 47), a ratio Vf/Vb of a total volume Vf of the metal circuit (item 3) to a total volume Vb of the metal member (item 8) being not less than 0.80 and not more than 1.20 (paragraph 47, “may be the same”).
In regards to claim 3, Kato (Figs. 1-5 and associated text) discloses wherein the metal circuit (item 3) is formed by pressing, cutting, or wire cutting (paragraph 58).
"Even 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).
The method of forming a device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight.
In regards to claim 4, Kato (Fig. 4 and associated text) discloses wherein a plurality of the metal circuits (item 3) is located at the one surface of the ceramic substrate (item 2), a ratio Af/Ab of a sum Af of areas of the plurality of metal circuits (item 3) in a first plane to an area Ab of the metal member (item 8) in the first plane is not less than 0.80 and not more than 1.20, and the first plane is perpendicular to a first direction connecting the one surface and the other surface of the ceramic substrate (item 2).
In regards to claim 5, Kato (Figs. 1-5 and associated text) discloses wherein the thicknesses of the metal circuit (item 3) and the metal member (item 8) each are not less than 2 mm.
In regards to claim 6, Kato (Figs. 1-5 and associated text) discloses wherein the ceramic substrate (item 2) is one selected from an aluminum oxide substrate, an aluminum nitride substrate, and a silicon nitride substrate (paragraph 54).
In regards to claim 7, Kato (Figs. 1-5 and associated text) discloses wherein a thickness of the ceramic substrate (item 2) is not more than 0.7 mm (paragraph 14).
In regards to claim 8, Kato (Figs. 1-5 and associated text) discloses wherein the metal circuit (item 3) and the metal member (item 8) each are made of one selected from copper, a copper alloy, aluminum, and an aluminum alloy (paragraph 45).
In regards to claim 9, Kato (Figs. 1-5 and associated text) discloses further comprising: a first bonding layer (item 4) bonding the ceramic substrate (item 2) and the metal circuit (item 3); and a second bonding layer (item 4) bonding the ceramic substrate (item 2) and the metal member (item 8), the first bonding layer (item 4) and the second bonding layer (item 4) each including at least two selected from the group consisting of silver, copper, titanium, zirconium, hafnium, niobium, tin, indium, zinc, aluminum, silicon, carbon, and magnesium (paragraphs 46, 55).
In regards to claim 10, Kato (Figs. 1-5 and associated text) discloses a semiconductor device, comprising: the ceramic circuit substrate (item 2) according to claim 1; and a semiconductor element (item 2) mounted to the metal circuit (item 3) via a bonding layer (bonding brazing material, not shown).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (Kato) (EP 3031789 A1) in view of Yamamoto et al. (Yamamoto) (WO 2017057093 A1).
In regards to claim 2, Kato does not specifically disclose wherein a groove is formed in the metal member (item 8).
Yamamoto (Figs. 27 and associated text) discloses wherein a groove (item 82) is formed in the metal member (item 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Yamamoto for the purpose of heat dissipation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Aona (WO 2021/200813 A1, Fig. 1(b) anticipates claims 1 and 3-10. Kato (US 2019/0172765 A1, see written search report) anticipates claims 1, 2 and 4-10. Otsubo et al. (US 2016/0095213 A1, see written search report) anticipate claims 1, 2, 4-8 and 10. Examiner suggests that that the Applicant review these references before responding.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TELLY D GREEN whose telephone number is (571)270-3204. The examiner can normally be reached M-F 8am-5pm.
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TELLY D. GREEN
Examiner
Art Unit 2898
/TELLY D GREEN/Primary Examiner, Art Unit 2898 September 15, 2026
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