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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12 March 2024, 11 June 2025 and 03 June 2026 were filed prior to the mailing date of this office correspondence. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election of Group I, claims 16-29 and 31 in the reply filed on 31 December 2025 is acknowledged.
Applicant argues that, “the two groups fall within category (1) as a product and a process specially adapted for the manufacture of said product, and share a special technical feature that defines a contribution over the prior art. Second, Applicant submits that since a search for the subject matter of Group I would so overlap the search for the subject matter of Group II, examining all groups can be performed without serious burden.”
Examiner respectfully submits that, Group I does not have a “circuit board” or “partly embedded in insulating material and is electrically connected at connection points to a conductor structure of the circuit board”, as recited in Group II. Further, given their broadest reasonable interpretation consistent with the specification, a person of ordinary skill in the art would not read claim 16 as a circuit board. Therefore, a search for the subject matter of Group I would not overlap the search for the subject matter of Group II. Furthermore, if, during the prosecution, a linking claim becomes allowable, the withdrawn claims depending therefrom would be rejoined and examined for patentability from a 35 U.S.C. 112 perspective. The requirement is still deemed proper and therefore made FINAL.
Claim 30 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Claim Objections
Claim 19 is objected to because of the following informalities:
In claim 19, lines 3-4: “so that some surface sections of the electrically conductive planar element are covered” should read:
-- so that selected surface sections of the electrically conductive planar element are covered --
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-29 and 31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 16, the limitation “reducing a thickness along second contour lines, so that the shaped part remains connected only along the second contour lines by material bridges” renders claim indefinite because, lines 3-4 recite, “completely cutting through the electrically conductive planar element along first contour lines in order to at least partly expose the shaped part”. It is unclear how the shaped part remains connected if “completely cutting through the electrically conductive planar element along first contour lines”. See Fig. 4, the first contour lines 3 are around the shaped parts 1. In other words, the claim fails to recite a structural relationship between the first contour lines, second contour lines and material bridges or defining a shaped part. Further, as best understood, well-known lead frame reads on the recited limitation. Furthermore, lead frame has the advantage of avoiding the recited “reducing a thickness along the second contour lines” because, lead frames are manufactured using thin metal plates and are having thin material bridges detachably connected with the lead frame. As best understood, it appears that the limitation “completely cutting through the electrically conductive planar element along first contour lines” actually intends that completely cutting through the electrically conductive planar element along a selected contour of first contour lines, or the like.
In claim 21, the limitation in line 8, “the electrically conductive planar element is reduced in thickness when the shaped parts are contoured” is confusing because, claim 16 recites “reducing a thickness along second contour lines”. Therefore, it is unclear reducing the thickness of conductive planar element or reducing the thickness of the contour lines.
Claims 17-29 and 31 depend on claim 16. Therefore, claims 16-29 and 31 are rejected.
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) 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hisaya (JP 2003304038).
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Annotated Figs. 2A and 2B, Hisaya.
Regarding claim 16, Hisaya teaches, a method for producing at least one shaped part (product board 16, Figs. 1-2) from an electrically conductive planar element (wiring board 10, annotated Fig. 2A, see the Note below), comprising:
completely cutting through the electrically conductive planar element along first contour lines (cutting lines 18, Fig. 2A) in order to at least partly expose the shaped part (wiring board 10 is fixed in the fixing holes 24,…the product board 16 is cut and separated from the discard board 14 by hand or by machine along the cutting line 18, para. [0012]); and
reducing a thickness along second contour lines (see joint 12, Fig. 2A and 2B), so that the shaped part remains connected only along the second contour lines by material bridges (joint 12, Figs. 2A and 2B) and is detachable by cutting through the material bridges (outermost layers of substrates 10a and 10d on both the front and back surfaces of the joint 12 are cut away and connected only by the inner layers 10b and 10c, and the thickness of the joint 12 is thinner than that of the product substrate 16 and the discard substrate 14, para. [0017]).
Note: Hisaya teaches in para [0017-0019], wiring board 10, which has a four-layer structure consisting of substrates 10a to 10d…when the electronic components 20 are mounted on the product substrate 16 and then the product substrate 16 is cut along the cutting line 18 from the discard substrate 14, which anticipates an electrically conductive planar element.
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.
Claim(s) 16 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Giardina (US 6195881).
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Annotated Fig. 3, Giardina.
Regarding claim 16, Giardina teaches, a method for producing at least one shaped part (substrate 12, Figs. 1-3) from an electrically conductive planar element (gang includes multiple pieces of base metal or substrates 12, col. 2, lines 25-35), comprising:
completely cutting through the electrically conductive planar element along first contour lines (see annotated Fig. 3, section of decarburized steel metal is formed by stamping a piece coupon from a steel sheet of a desired thickness. This coupon includes the uncoated frame, the base pieces or substrates, connective portions and notches, col. 2, lines 51-55) in order to at least partly expose the shaped part (see Figs. 1 to 3); and
reducing a thickness along second contour lines (connection portion 18, Fig. 2, a pair of diametrically opposed V-shape notches 20 are formed in the connective portion 18, col. 2, line 34), so that the shaped part remains connected only along the second contour lines by material bridges (break-out zone 21, Fig. 2) and is detachable by cutting through the material bridges (these notches 20 create a break-out zone 21 that facilitates the removal of the substrates 12 from the frame 14, col. 2, line 36).
From the teachings of Giardina in col. 2, lines 51-59, “a section of decarburized steel metal is formed by stamping a piece coupon from a steel sheet of a desired thickness. This coupon includes the uncoated frame, the base pieces or substrates, connective portions and notches”, one of ordinary skill in the art would have known that stamping enables completely cutting through the electrically conductive steel 14 along the first contour lines and forms a connection portion 18 as presented in Figs. 1 to 3. Therefore, in view of the teachings of Giardina, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to completely cut through the conducting part along the first contour lines so that it enables a high volume production of shaped parts as Giardina disclosed in col. 1.
Claim(s) 17-20 and 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Hisaya as applied to claim 16 above, and further in view of Suzuki (US 20050155789).
Regarding claims 17-19, Hisaya does not tech, an etching process; or an etch-resistant mask applied to the conductive planar element. However, Suzuki teaches, a method for producing at least one shaped part (meal plate 12 Fig. 2) from an electrically conductive planar element (see Fig. 1), comprising: cutting through the electrically conductive planar element along first contour lines (etched grooves 16, Fig. 1 see annotated Fig. 9 below) in order to at least partly expose the shaped part (see Figs. 1 to 2); and reducing a thickness along second contour lines (etched groove 17, Fig. 1), so that the shaped part remains connected only along the second contour lines by material bridges and is detachable by cutting through the material bridges, in which,
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Annotated Figs. 8 and 9, Suzuki.
17. The method according to claim 16, further comprising: contouring the shaped part along the first and second contour lines by an etching process (first half etched grooves 16 (first depression portions) are formed on the first main surface (an upper surface 14) of the metal plate 12, and second half etched grooves 17 (second depression portions) are formed on the second main surface (a lower surface 15) of the metal plate 12, para. [0069]).
18. The method according to claim 17, wherein an etching substance of the etching process acts along the first and second contour lines simultaneously (simultaneous etching from opposite sides of the plate is preferred, para. [0033]) and/or for the same length of time on the electrically conductive planar element.
19. The method according to claim 17, wherein an etch-resistant mask (mask 41, para. [0074]) is applied to the electrically conductive planar element to define the first and second contour lines, so that some surface sections of the electrically conductive planar element are covered by the etch-resistant mask and other surface sections of the electrically conductive planar element are exposed to form the first and second contour lines (see Figs. 8 and 9, para. [0074]).
Further, Suzuki teaches in para. [0026-0028], process including etching and laser beam cutting that forms holes and cuts that enables cutting and etching of a desired material such as a circuit board. Therefore, in view of the teachings of Suzuki, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing a shaped part of Hisaya and replace the cutting process with an etching process including an etch-resistant mask as Suzuki taught in Figs. 7 to 9 so that it enables selectively controlling the etching of conductive material layers as Suzuki disclosed in para. [0026].
Regarding claim 20, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Hisaya further teaches, the method according to claim 19, wherein the exposed surface sections form a branched channel network (see annotated Fig. 2A below) with thicker and thinner channel sections passing through the covered surface sections, wherein the thicker channel sections form the first contour lines and the thinner channel sections form the second contour lines.
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Annotated Figs. 2A, Hisaya.
Regarding claim 22, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Hisaya further teaches, the method according to claim 19, wherein the contouring along the first and second contour lines produces a self-contained outer contour for the shaped part (see Fig. 1).
Regarding claim 23, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Hisaya further teaches, the method according to claim 19, wherein during the contouring of the shaped part all linear contours of the shaped part are exposed (see annotated Fig. 5A below) and all non-linear contours of the shaped part remain connected (see the connection portion 12) to further shaped parts or an edge of the electrically conductive planar element by material bridges.
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Annotated Fig. 5A, Hisaya.
Regarding claim 24, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Hisaya further teaches, the method according to claim 19, wherein some or all of the first contour lines each extend partly or completely along a straight line (see the connecting part 12 and the cutting line 18 in Figs. 2 to 6) and/or some or all of the second contour lines see the each extend partly or completely along a curved line.
Regarding claim 25, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Hisaya further teaches, the method according to claim 19, wherein each first contour line begins at a second contour line and ends at a second contour line (see, the connecting part 12 and the cutting line 18, Fig. 2 to 6).
Regarding claim 26, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Hisaya further teaches, the method according to claim 19, wherein some or all of the first and second contour lines meet at right angles (see Fig. 2A and 3B).
Regarding claim 27, Hisaya in view of Suzuki teaches the recited limitations with respect to claim 19. Modified Hisaya does not tech, a matrix form in rows and columns in the electrically conductive planar element. However, Suzuki further teaches, the method according to claim 19, wherein the shaped part to be cut out is arranged with further shaped parts to be cut in a matrix form in rows and columns in the electrically conductive planar element (see Fig. 1). Therefore, in view of the teachings of Suzuki, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method of producing a shaped part of Hisaya and to include conductive planar elements in a matrix form as Suzuki taught in Fig. 1 so that it enables a high volume production of a shaped part.
Claim(s) 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Hisaya in view of Suzuki as applied to claim 19 above, and further in view of Taguchi (US 20090098712).
Regarding claims 28 and 29, modified Hisaya does not teach, the recited limitations. However, Taguchi teaches, a method for producing a shaped part, including completely cutting through the planar element along first contour lines in order to at least partly expose the shaped part, in which,
28. The method according to claim 19, wherein the shaped part has a polygonal basic contour (see silicon chip 20, Figs. 3A and 3B, and 7) with concavely rounded corners which run along the second contour lines and are cut with convexly rounded structures which form parts of the material bridges (see Fig. 3A).
29. The method according to claim 19, wherein the shaped part is connected by at least one material bridge to at least one other shaped part (Figs. 1A and 1B).
Therefore, in view of the teachings of Taguchi, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method producing a shaped part of Hisaya and to include a polygonal basic contour as Taguchi teaches in Figs. 3A and 7 so that it enables improving the manufacturing yield during the high volume production of the shaped parts.
Claim(s) 31 is rejected under 35 U.S.C. 103 as being unpatentable over Hisaya in view of Suzuki as applied to claim 19 above, and further in view of Giardina (US 6195881).
Regarding claim 27, modified Hisaya does not tech, spraying with an etching substance. However, Giardina further teaches, a method of producing a shaped part in which, the method according to claim 17, wherein the etching process further comprises spraying with an etching substance (thick film of resist such as a nickel alloy thick film is printed, such as by screen printing, brushing, fluid dispensing or spraying at a desired location, col. 2, line 58). Therefore, in view of the teachings of Giardina, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the method producing a shaped part of Hisaya and to include spraying with an etching substance so that it enables a high volume production of a shaped part as Giardina disclosed in col. 1.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for indicating allowable subject matter:
Claim 21 would be allowable for disclosing, a method for producing shaped part from an electrically conductive planar element, wherein etch-resistant masks are applied to both sides of the electrically conductive planar element to form the first and second contour lines, wherein the masks are congruent or non-congruent on both sides of the electrically conductive planar element, wherein in the case of non-congruent masks on both sides of the electrically conductive planar element, some or all of thicker channel sections for forming the first contour lines overlap one another and/or some or all of thinner channel sections for forming the second contour lines are at least partly offset relative to one another, so that the electrically conductive planar element is reduced in thickness when the shaped parts are contoured, starting from both sides and forming the second contour lines offset from one another, wherein a minimum distance of the mutually offset second contour lines in the plane of the electrically conductive planar element is less than the overlap of the mutually offset second contour lines perpendicular to the plane of the electrically conductive planar element.
Though, prior art of Suzuki (US 20050155789) teaches, a method for producing shaped part from an electrically conductive planar element, wherein etch-resistant masks are applied to both sides of the electrically conductive planar element to form the first and second contour lines, wherein the masks are congruent or non-congruent on both sides of the electrically conductive planar element, wherein in the case of non-congruent masks on both sides of the electrically conductive planar element, some or all of thicker channel sections for forming the first contour lines overlap one another and/or some or all of thinner channel sections for forming the second contour lines are at least partly offset relative to one another, so that the electrically conductive planar element is reduced in thickness when the shaped parts are contoured, starting from both sides and forming the second contour lines offset from one another, Suzuki fails to teach, a minimum distance of the mutually offset second contour lines in the plane of the electrically conductive planar element is less than the overlap of the mutually offset second contour lines perpendicular to the plane of the electrically conductive planar element.
Prior art of record Hisaya or Giardina does not teach, an etching process; or etch-resistant masks are applied to both sides of the electrically conductive planar element to form the first and second contour lines, wherein the masks are congruent or non-congruent on both sides of the electrically conductive planar element, wherein in the case of non-congruent masks on both sides of the electrically conductive planar element, some or all of thicker channel sections for forming the first contour lines overlap one another and/or some or all of thinner channel sections for forming the second contour lines are at least partly offset relative to one another, so that the electrically conductive planar element is reduced in thickness when the shaped parts are contoured, starting from both sides and forming the second contour lines offset from one another, wherein a minimum distance of the mutually offset second contour lines in the plane of the electrically conductive planar element is less than the overlap of the mutually offset second contour lines perpendicular to the plane of the electrically conductive planar element.
Therefore, claim 21 would be allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Prior art Fukase (US 20040245213) teaches, a method for producing a shaped part from an electrically conductive planar element, comprising: cutting through the electrically conductive planar element along first contour lines in order to at least partly expose the shaped part; and reducing a thickness along second contour lines, so that the shaped part remains connected only along the second contour lines by material bridges and is detachable by cutting through the material bridges.
Prior art Ueda (US 20060127690) teaches, a method for producing a shaped part from an electrically conductive planar element, comprising: cutting through the electrically conductive planar element along first contour lines; and reducing a thickness along second contour lines, so that the shaped part remains connected only along the second contour lines by material bridges and is detachable by cutting through the material bridges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE K. ABRAHAM whose telephone number is (571)270-1087. The examiner can normally be reached Monday-Friday 8:30-4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS J. HONG can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE K ABRAHAM/Examiner, Art Unit 3729
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