CTNF 18/674,230 CTNF 84655 DETAILED ACTION Notice of AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. IDS The IDS document(s) filed on May 24, 2024 has been considered. Copies of the PTO-1449 documents are herewith enclosed with this office action. Drawing Objections 06-36 AIA The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “and a conductor comprising solder or an alloy phase between the solder and another metal and surrounding at least a portion of an outer circumference of the land are exposed on the mounting surface” of claim 1 and “an area of the conductor surrounding the outer circumference of the land is 50% or more and 500% or less of an area of the land” and its variations in claims 2, 3, 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections – 35 U.S.C. § 112(b) The following is a quotation of 35 U.S.C. § 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 07-34-01 Claims 1-15 are rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant, regards as the invention. As to claim 1, it is unclear what is meant by “electrically connected to an electrode of the electronic component and a conductor comprising solder or an alloy phase between the solder and another metal and surrounding at least a portion of an outer circumference of the land are exposed on the mounting surface ” (emphasis added). Is it the conductor comprising solder or the alloy phase and another metal that surrounds at least a portion of an outer circumference of the land? The Examiner assumes that it is only the alloy phase between the solder and another metal that surrounds at least a portion of an outer circumference of the land are exposed on the mounting surface. This assumption is supported by instant FIG. 1 which shows alloy phase 40a surrounding land 30 whereas solder 40b instead surrounds the electrode 15. As to claims 2, 3, and 7, it is unclear how the conductor surrounds 50% or more and XXX% or less of the outer circumference of the land if the conductor comprises solder. The conjunction “or” in parent claim 1 creates a possibility where the conductor only comprises solder and not an alloy phase between the solder and another metal. As to claims 4, 8, and 9, it is unclear how “ wherein the land includes multiple lands” because a singular structural unit cannot also include multiple units. The Examiner instead assumes it is the electronic component package, not the land, that further includes multiple lands as supported by FIGS. 9 and 10 of the instant application. Claim Rejections 35 U.S.C. § 102(a)(1) 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-15 are rejected under 35 U.S.C. § 102( a)(1 ) as being anticipated by Kimura et al. (U.S. Patent Publication No. 2014/00217627 A1), as cited in the IDS and hereafter “Kimura” . As to claims 1, Kimura teaches: An electronic component 10 . See Kimura, FIG. 3. A sealing resin 6 sealing the electronic component. Wherein one 6a of main surfaces of the sealing resin defines a mounting surface for mounting the electronic component package on a different substrate. In a view of the mounting surface of the sealing resin, a land 3 electrically connected to an electrode 11 of the electronic component and a conductor comprising solder 42 or an alloy phase between the solder and another metal and surrounding at least a portion of an outer circumference of the land are exposed on the mounting surface. Based on the 35 U.S.C. § 112(b) rejection interpretation above, it is only the conductor comprising an alloy phase and another metal that is required to surround at least a portion of an outer circumference of the land and is exposed on the mounting surface. As to claims 2, 3, and 7, this claim limitation is considered because Kimura teaches a conductor comprising solder. As to claims 4, 8, 9, Kimura teaches the land includes multiple lands 3 disposed on the mounting surface, and a portion of the conductor connects between the multiple lands. Id. at FIG. 4. As to claim 5, 10-12, Kimura teaches a substrate 7 on which the electronic component package is mounted. Id. at FIG. 5. As to claims 6, 13-15, the limitations comprise product by process language and do not structurally limit the claims. Kimura teaches the structure as claimed in parent claim 1. It is well settled that “product by process” limitations in claims drawn to structure are directed to the product, per se , no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a “product by process” claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or otherwise. The above case law further makes clear that applicant has the burden of showing that the method language necessarily produces a structural difference. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUBERR CHI whose telephone number is (571)270-3955. The examiner can normally be reached 10am to 6pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Purvis can be reached on (571) 272-1236. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SUBERR L CHI/Primary Examiner, Art Unit 2893 Application/Control Number: 18/674,230 Page 2 Art Unit: 2893 Application/Control Number: 18/674,230 Page 3 Art Unit: 2893 Application/Control Number: 18/674,230 Page 4 Art Unit: 2893 Application/Control Number: 18/674,230 Page 5 Art Unit: 2893 Application/Control Number: 18/674,230 Page 7 Art Unit: 2893
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