DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed February 9, 2026, are acknowledged. Claims 1-5 are amended and Claim 6 is cancelled.
Claims 11-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, Group II and Group III, directed to a module substrate and directed to an electronic part, respectfully, there being no allowable generic or linking claim. Applicant timely elected with traverse in the reply filed August 20, 2025.
Claims 1-5 and 7-20 are pending, and Claims 1-5 and 7-10 are currently considered in this office action.
Oath/Declaration
The Declaration of Takahiro Yokoyama under 37 CFR 1.132 filed February 9, 2026, in addition to the amendments to the claims further narrowing the range Ni from 0.05-0.08% to 0.07-0.08%, is sufficient to overcome the rejection of Claim 1 based upon Tanaka780 (previously cited as Tanaka). However, upon further consideration to the amendments, a new ground(s) of rejection is made over Tanaka545 and over Tanaka780 in view of Tanaka545.
Tanaka545 discloses comprising 0.07% Ni, which reads on the newly amended claim range of 0.07-0.08%, and the declaration is insufficient to overcome the new ground(s) of rejection because Tanaka545 expressly teaches the claimed 0.07% Ni.
Claim Interpretation
The preamble of independent Claim 1 recites a solder ball “which is installed for use as an electrode on a rear surface of a module substrate for a BGA or a CSP and which is fused with a solder paste”. The limitation is interpreted as an intended use feature (see explanation in Claim 1 below).
Additionally, dependent claims indicate that the claims are directed to the solder ball without solder processing (see Claims 7-9 – one of ordinary skill in the art would appreciate that a solder ball which has been fused with solder pasted and in the form of an electrode/joint would be soldered and no longer comprise the form of a ball or a ball with the claimed diameters).
Examiner interprets the claims to be directed only to the solder ball and not a soldered material (i.e., directed to a solder ball absent of solder paste, post-processing (reflow), installation as an electrode and absent a module substrate).
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-5, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka545 (cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1).
Regarding Claim 1, Tanaka545 discloses a lead-free solder ball which is installed for use as an electrode on a rear surface of a module substrate for a BGA or CSP and which is fused with solder paste (Abstract; para. [0002]-[0003]; flux reads on solder paste),
the solder ball having a solder composition consisting:
Element
Claim 1 (wt%)
Tanaka545 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
[0035]
Cu
0.7-0.8
0.3-1.0
[0036]
Ni
0.07-0.08
0.005-0.1, pref. 0.005-0.07
[0037]; [0080]-[0082]
Fe and/or Co
0.003-0.1 total
0.0001-0.005 Fe and/or 0.005-0.1 Co
[0040]-[0041]; [0053]
balance
Sn
Sn
[0038]
Further, Tanaka545 teaches wherein Ni content is preferably 0.07% in order to maximize drop resistance while also keeping a change in hardness in good condition before and after reflowing (para. [0080]-[0082]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have comprised a Ni content of 0.07%, as claimed, in order to maximize drop resistance while also keeping a change in hardness in good condition before and after reflowing (see teaching above).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding the preamble limitation “which is installed for use as an electrode on a rear surface of a module substrate for a BGA or a CSP and which is fused with a solder paste”, these are interpreted as intended use limitations of the solder ball, the intended use being installation and fusion with a solder paste, and do not carry patentable weight on the product composition.
If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02.
Regarding Claim 2, Tanaka545 discloses a lead-free solder ball which is installed for use as an electrode on a rear surface of a module substrate for a BGA or CSP and which is fused with solder paste (Abstract; para. [0002]-[0003]; flux reads on solder paste),
the solder ball having a solder composition consisting:
Element
Claim 2 (wt%)
Tanaka545 (wt%)
Citation
Ag
1.6-2.0
1.0-2.0
[0035]
Cu
0.7-0.8
0.3-1.0
[0036]
Ni
0.07-0.08
0.07 (see Claim 1)
[0080]-[0082]
Fe and/or Co
0.003-0.1 total
0.0001-0.005 Fe and/or 0.005-0.1 Co
[0040]-[0041]; [0053]
balance
Sn
Sn
[0038]
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 3, Tanaka545 discloses a lead-free solder ball which is installed for use as an electrode on a rear surface of a module substrate for a BGA or CSP and which is fused with solder paste (Abstract; para. [0002]-[0003]; flux reads on solder paste),
the solder ball having a solder composition consisting:
Element
Claim 3 (wt%)
Tanaka545 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
[0035]
Cu
0.7-0.8
0.3-1.0
[0036]
Ni
0.07-0.08
0.07 (see Claim 1)
[0080]-[0082]
Fe
0.003-0.1 total
0.0001-0.005 Fe
[0040]
balance
Sn
Sn
[0038]
One of ordinary skill in the art would appreciate that Co is not a required element, which reads on the language ‘consisting of’ (see Table 5, inventive examples only comprise Ag, Cu, Ni, Fe and Sn).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 4, Tanaka545 discloses a lead-free solder ball which is installed for use as an electrode on a rear surface of a module substrate for a BGA or CSP and which is fused with solder paste (Abstract; para. [0002]-[0003]; flux reads on solder paste),
the solder ball having a solder composition consisting:
Element
Claim 4 (wt%)
Tanaka545 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
[0035]
Cu
0.7-0.8
0.3-1.0
[0036]
Ni
0.07-0.08
0.07 (see Claim 1)
[0080]-[0082]
Co
0.003-0.1 total
0.005-0.1 Co
[0053]
balance
Sn
Sn
[0038]
One of ordinary skill in the art would appreciate that Fe is not a required element, which reads on the language ‘consisting of’ (see Table 13, inventive examples which only comprise Ag, Cu, Ni, Co and Sn).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 5, Tanaka545 discloses a lead-free solder ball which is installed for use as an electrode on a rear surface of a module substrate for a BGA or CSP and which is fused with solder paste (Abstract; para. [0002]-[0003]; flux reads on solder paste),
the solder ball having a solder composition consisting:
Element
Claim 5 (wt%)
Tanaka545 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
[0035]
Cu
0.7-0.8
0.3-1.0
[0036]
Ni
0.07-0.08
0.07 (see Claim 1)
[0080]-[0082]
Fe and Co
0.003-0.1 total
0.0001-0.005 Fe and 0.005-0.1 Co
[0040]-[0041]
balance
Sn
Sn
[0038]
Tanaka545 discloses a total amount of Ni, Co and Fe of up to 0.1% (para. [0041]). In a composition comprising 0.07% Ni (see Claim 1 and para. [0082] of Tanaka545), the teachings of Tanaka545 include an alloy comprising, for example, 0.005% Fe and 0.005% Co (Ni + Fe + Co = 0.08%), which reads on the claimed ranges.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 7, Tanaka545 discloses wherein the diameter of solder ball is 300um (para. [0048]; para. [0138]; 300um is 0.300mm), which reads on the claimed range of 0.100mm or more.
Regarding Claim 8, Tanaka545 further discloses wherein the diameter of solder ball is 300um (para. [0048]; para. [0138]; 300um is 0.300mm), which reads on the claimed range of 0.300mm or more.
Regarding Claim 10, Tanaka545 disclose the claimed solder ball (see Claim 1 above), and one of ordinary skill in the art before the effective filing date of the claimed invention would appreciate that the solder ball would behave the same as claimed when subjected to the claimed testing because the solder ball of Tanaka545 comprises the same composition and is the same as claimed.
When 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, 4383 (CCPA 1977). See MPEP 2112.01.
Claims 1-3, 5, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka780 (previously cited, JP 2002239780 A, English Machine Translation provided) in view of Tanaka545 (cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1).
Regarding Claim 1, Tanaka780 discloses a lead-free solder ball which is installed for use as an electrode on a rear surface of a module substrate for a BGA or CSP and which is fused with solder paste (para. [0002]-[0003]; flux reads on solder paste),
the solder ball having a solder composition consisting of 1-2% Ag, 0.3-1.5% Cu, 0.05-1.5% Ni and 0.005-0.5% Fe, and a remainder of Sn (Abstract; para. [0012]; elements Sb and Zn may be 0% which reads on the claim language ‘consisting of’), which reads on the claimed ranges of 1.6-2.9% Ag, 0.7-0.8% Cu, 0.05-0.08% Ni, at least one of Fe and Co in a total amount of 0.003-0.1%, and a remainder of Sn.
While Tanaka780 disclose wherein Ni may be as low as 0.05%, Tanaka does not disclose a narrower range.
Tanaka545 teaches wherein Ni content is preferably 0.07% in order to maximize drop resistance while also keeping a change in hardness in good condition before and after reflowing (para. [0080]-[0082]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have comprised a Ni content of 0.07%, as claimed, as taught by Tanaka545, in order to maximize drop resistance while also keeping a change in hardness in good condition before and after reflowing (see teaching above). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding the preamble limitation “which is installed for use as an electrode on a rear surface of a module substrate for a BGA or a CSP and which is fused with a solder paste”, these are interpreted as intended use limitations of the solder ball, the intended use being installation and fusion with a solder paste, and do not carry patentable weight on the product composition (see claim interpretation and 112b rejection above). If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02.
Regarding Claim 2, Tanaka780 and Tanaka545 discloses wherein the solder composition consists of 1-2% Ag, 0.3-1.5% Cu, 0.07% Ni (see Claim 1 teachings above by Tanaka545) and 0.005-0.5% Fe, and a remainder of Sn (Abstract; para. [0012]; elements Sb and Zn may be 0% which reads on the claim language ‘consisting of’), which reads on the claimed ranges of 1.6-2.0% Ag, 0.7-0.8% Cu, 0.05-0.08% Ni, at least one of Fe and Co in a total amount of 0.003-0.1%, and a remainder of Sn.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 3, Tanaka780 discloses wherein the solder composition consists of 1-2% Ag, 0.3-1.5% Cu, 0.07% Ni (see Claim 1 teachings above by Tanaka545) and 0.005-0.5% Fe, and a remainder of Sn (Abstract; para. [0012]; elements Sb and Zn may be 0% which reads on the claim language ‘consisting of’), which reads on the claimed ranges of 1.6-2.9% Ag, 0.7-0.8% Cu, 0.05-0.08% Ni, Fe in a total amount of 0.003-0.1%, and a remainder of Sn.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 5, Tanaka780 discloses wherein the solder composition consists of 1-2% Ag, 0.3-1.5% Cu, 0.07% Ni (see Claim 1 teachings above by Tanaka545) and 0.005-0.5% Fe, and a remainder of Sn (Abstract; para. [0012]; elements Sb and Zn may be 0% which reads on the claim language ‘consisting of’), which reads on the claimed ranges of 1.6-2.9% Ag, 0.7-0.8% Cu, 0.05-0.08% Ni, Fe in a total amount of 0.003-0.1%, and a remainder of Sn.
Tanaka780 fails to disclose Co, such that the total amount of Co and Fe is 0.003-0.1%.
Tanaka545 further teaches including 0.005-0.10% Co in order to improve impact resistance while balancing for hardness and increased melting temperature (para. [0113]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 0.005-0.10% Co, as taught by Tanaka545, in order to improve impact resistance while balancing for hardness and increased melting temperature (see teaching above). Therefore the amount of Fe and Co for the invention of Tanaka780 and Tanaka545 would range from 0.008-0.2%, which reads on the claimed range of 0.003-0.1%.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 7, Tanaka780 discloses wherein the diameter of solder ball is 300um (para. [0034]; 300um is 0.300mm), which reads on the claimed range of 0.100mm or more.
Regarding Claim 8, Tanaka780 further discloses wherein the diameter of solder ball is 300um (para. [0034]; 300um is 0.300mm), which reads on the claimed range of 0.300mm or more.
Regarding Claim 10, Tanaka780 and Tanaka545 disclose the claimed solder ball (see Claim 1 above), and one of ordinary skill in the art before the effective filing date of the claimed invention would appreciate that the solder ball would behave the same as claimed when subjected to the claimed testing because the solder ball of Tanaka and Ito comprises the same composition and is the same as claimed.
When 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, 4383 (CCPA 1977). See MPEP 2112.01.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (previously cited, JP 2002239780 A, English Machine Translation provided) in view of Tanaka545 (cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1), as applied to Claim 1 above, in further view of Yoshitome (previously cited, US 20020150787 A1).
Regarding Claim 9, Tanaka780 further discloses wherein the size of solder ball is 300um (para. [0034]; 300um is 0.300mm), but does not disclose a range for the solder ball and fails to disclose wherein the diameter of the solder ball is at least 0.500mm.
Yoshitome teaches wherein solder balls used for BGA and electronic bonding of electronic parts are 0.1-1.2mm (para. [0010]; Claim 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the solder ball size of 0.1-1.2mm, which includes the claimed range of 0.5mm or more, as taught by Yoshitomi, for the invention disclosed by Tanaka780, because Yoshitome teaches that this size is appropriate for electronic bonding and electronic parts, including BGA’s, which is a use specifically outlined by Tanaka (see para. [0002] of Tanaka).
Response to Arguments
Applicant’s arguments, filed February 9, 2026, with respect to Claim 1, and dependent claims thereof, rejected under 35 U.S.C. 103 over Tanaka780 (previous cited as Tanaka), over Tanaka780 in view of Ito, and over Ito in view of Tanaka780, have been fully considered and are persuasive in view of Applicant’s amendments to the claims further narrowing the Ni range to 0.07-0.08% and in view of the results presented in the Declaration (see response above). Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in over Tanaka545 and over Tanaka780 in view of Tanaka780, as detailed above.
Applicant’s arguments are deemed moot in view of the new grounds of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tawara (JP 2005246480 A, English Machine Translation provided): teaches a solder alloy comprising 0.3-4% Ag, 0.1-1.0% Cu, 0.01-0.5% Co, 0.01-0.1% Ni and a balance of Sn (Abstract).
Ito (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20020117539 A1): discloses a solder composition consisting of 1-4% Ag, 0.2-1.3% Cu, 0.02-0.06% Ni, 0.02-0.06% Co, optionally 0.02-0.06% Fe, and a remainder of Sn (para. [0016]; [0018]; total amount of Co and Fe, when included together, ranges from 0.04-0.12). Ito discloses wherein the solder is used for processing the surface of a printed wiring board and for mounting an electronic part, but does not expressly disclose that the solder is in the form of a ball (para. [0002]).
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 CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735