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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 3, 2026, has been entered.
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed August 3, 2026, are acknowledged. Claims 1-2 and 5 are amended, Claims 3-4, 7-9 and 11-20 are cancelled, and Claims 21-26 are newly added.
Claims 1-2, 5, 10 and 21-26 are pending and currently considered in this office action.
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). 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 § 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.
Claim 22, and dependent Claim 24, 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 22 recites the broad recitation 0.01-0.1% Fe, and the claim also recites a total amount of Fe and Co of 0.003-0.1% which is the narrower statement of the range/limitation (Fe cannot be 0.1% in the presence of Co). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tawara (previously cited, JP 2005246480 A, English Machine Translation provided) in view of Tanaka545 (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1) and Yoshitome (previously cited, US 20020150787 A1).
Regarding Claim 1 and Claim 2, Tawara discloses a lead-free solder which is fused with solder paste (para. [0027]; see also claim interpretation above),
the solder ball having a solder composition consisting of:
Element
Claim 1 (wt%)
Claim 2 (wt%)
Tawara (wt%)
Citation
Ag
1.6-2.9
1.6-2.0
0.3-4.0
Abstract
Cu
0.7-0.8
0.7-0.8
0.1-1.0, pref. 0.5-1.0
Abstract; para. [0021]
Ni
0.07-0.08
0.07-0.08
0.01-0.1
Abstract
Co
0.003-0.1
0.003-0.1
0.01-0.50
Abstract
balance
Sn
Sn
Sn
Abstract
Tawara discloses 0.01-0.1% Ni, but does not expressly disclose the claimed range 0.07-0.08% Ni.
Tanaka545 teaches wherein Ni content comprises an upper limit of 0.07% in order to achieve the effects of 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, for the invention disclosed by Tawara, in order to maximize the effect of drop resistance while also keeping a change in hardness in good condition before and after reflowing (see teaching above).
Regarding the compositional 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.
Tawara further discloses a resin flux cored solder size of 0.5mm, but does not expressly disclose a solder ball 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 a solder ball size up to 1.2mm, as taught by Yoshitome, for the invention disclosed by Tawara, in order to apply the sold of Tawara to electronic bonding and electronic parts such as BGA’s (see teaching above).
.
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 10, Tawara, Tanaka545 and Yoshitome 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 Tawara and 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.
Claim 21 is 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 (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1).
Regarding Claim 21, 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:
Element
Claim 21 (wt%)
Tanaka780 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
Abstract
Cu
0.7-0.8
0.3-1.5
Abstract
Ni
0.07-0.08
0.05-1.5
Abstract
Fe
0.01-0.1
0.005-0.50 Fe
Abstract
balance
Sn
Sn
Abstract
While Tanaka780 discloses wherein Ni may be as low as 0.05%, Tanaka780 does not disclose a narrower range.
Tanaka545 teaches wherein Ni content comprises an upper limit of 0.07% in order to achieve the effects of 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, for the invention disclosed by Tanaka780, in order to maximize the effect of drop resistance while also keeping a change in hardness in good condition before and after reflowing (see teaching above).
Regarding the compositional 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 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 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.
Claim 23 is 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 (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1), as applied to Claim 21 above, in further view of Yoshitome (previously cited, US 20020150787 A1).
Regarding Claim 23, 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 a solder ball size up to 1.2mm, as taught by Yoshitome, 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 Tanaka780 (see para. [0002] of Tanaka780).
Claim 5, Claim 22 and Claim 24 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 Yoshitome (previously cited, US 20020150787 A1) and Tanaka545 (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1).
Regarding Claim 5, 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:
Element
Claim 5 (wt%)
Tanaka780 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
Abstract
Cu
0.7-0.8
0.3-1.5
Abstract
Ni
0.07-0.08
0.05-1.5
Abstract
Fe and Co
0.003-0.1 total
0.005-0.50 Fe
Abstract
balance
Sn
Sn
Abstract
Tanaka780 discloses Fe, but is silent towards Co and also fails to disclose a total amount of Fe and Co of 0.003-0.1%.
Yoshitomi teaches 0.01-0.1% Co and 0.01-0.1% Fe as solutes in the Sn matrix in order to suppress the mutual diffusion between Sn of the solder bulk and Cu or Ni of the land while balancing for melting point (para. [0026]-[0027]).
Tanaka545 teaches wherein a total amount of Ni, Co and Fe is 0.1% or less in order to balance for hardness, drop resistance reductions and melting point increases (para. [0041]; [0114]).
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 0.01-0.1% Co, limited Fe to 0.01-0.1% and limited a total amount of Ni, Fe and Co to 0.1%, as taught by Yoshitomi and Tanaka545, respectively, for the invention disclosed by Tanaka780, in order to suppress the mutual diffusion between Sn of the solder bulk and Cu or Ni of the land while balancing for melting point (see teaching by Yoshitomi), and in order to balance for hardness, drop resistance reductions and melting point increases (see teaching by Tanaka545).
While Tanaka780 discloses wherein Ni may be as low as 0.05%, Tanaka780 does not disclose a narrower range.
Tanaka545 teaches wherein Ni content comprises an upper limit of 0.07% in order to achieve the effects of 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, for the invention disclosed by Tanaka780, in order to maximize the effect of drop resistance while also keeping a change in hardness in good condition before and after reflowing (see teaching above).
Regarding the compositional 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.
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 a solder ball size up to 1.2mm, as taught by Yoshitome, 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 Tanaka780 (see para. [0002] of Tanaka780).
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 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 22, 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:
Element
Claim 22 (wt%)
Tanaka780 (wt%)
Citation
Ag
1.6-2.9
1.0-2.0
Abstract
Cu
0.7-0.8
0.3-1.5
Abstract
Ni
0.07-0.08
0.05-1.5
Abstract
Fe
0.01-0.1
0.005-0.50 Fe
Abstract
balance
Sn
Sn
Abstract
Tanaka780 discloses Fe, but is silent towards Co and also fails to disclose a total amount of Fe and Co of 0.003-0.1%.
Yoshitomi teaches 0.01-0.1% Co and 0.01-0.1% Fe as solutes in the Sn matrix in order to suppress the mutual diffusion between Sn of the solder bulk and Cu or Ni of the land while balancing for melting point (para. [0026]-[0027]).
Tanaka545 teaches wherein a total amount of Ni, Co and Fe is 0.1% or less in order to balance for hardness, drop resistance reductions and melting point increases (para. [0041]; [0114]).
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 0.01-0.1% Co, limited Fe to 0.01-0.1% and limited a total amount of Ni, Fe and Co to 0.1%, as taught by Yoshitomi and Tanaka545, respectively, for the invention disclosed by Tanaka780, in order to suppress the mutual diffusion between Sn of the solder bulk and Cu or Ni of the land while balancing for melting point (see teaching by Yoshitomi), and in order to balance for hardness, drop resistance reductions and melting point increases (see teaching by Tanaka545).
While Tanaka780 discloses wherein Ni may be as low as 0.05%, Tanaka780 does not disclose a narrower range.
Tanaka545 teaches wherein Ni content comprises an upper limit of 0.07% in order to achieve the effects of 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, for the invention disclosed by Tanaka780, in order to maximize the effect of drop resistance while also keeping a change in hardness in good condition before and after reflowing (see teaching above).
Regarding the compositional 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 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 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 24, 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 a solder ball size up to 1.2mm, as taught by Yoshitome, 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 Tanaka780 (see para. [0002] of Tanaka780).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka545 (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1) in view of Yoshitome (previously cited, US 20020150787 A1).
Regarding Claim 25, 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
0.003 to <0.005
pref. 0.001-0.005 Fe
[0111]
balance
Sn
Sn
[0038]
Further, Tanaka545 teaches wherein Ni content comprises an upper limit of 0.07% in order to achieve the effects of 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 the effect of 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.
Tanaka545 discloses wherein the solder ball may preferably comprise a diameter of not more than 300 micron and wherein the solder ball is broadly used for an electronic member and Cu electrode (para. [0094]-[0096]; 300 microns 0.300mm), but fails to disclose a solder ball diameter of at least 0.5mm.
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 a solder ball size up to 1.2mm, as taught by Yoshitome, for the invention disclosed by Tanaka545, because Yoshitome teaches that this size is appropriate for electronic bonding and electronic parts, specifically BGA’s. Additionally, such a modification would merely require a change in size, which is generally recognized as being within the level of ordinary skill in the art, and Applicant has not provided a showing of criticality. See MPEP 2144.04.IV.A.
It is noted that the 300 micron diameter disclosed by Tanaka545 is a preferred embodiment, and Tanaka545 does not expressly teach away from a larger solder ball size, and therefore the teachings of Yoshitome are applicable.
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.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka545 (previously cited and cited by Applicant in IDS filed July 17, 2024, US 20090304545 A1).
Regarding Claim 26, 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 26 (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 Co
0.003-0.1 total
0.0001-0.005 Fe and 0.005-0.1 Co;
pref. Ni, Co and Fe total 0.1% or less
[0040]-[0041]; [0053]; [0113]
Fe
0.003 to <0.005
pref. 0.001-0.005 Fe
[0111]
balance
Sn
Sn
[0038]
Further, Tanaka545 teaches wherein Ni content comprises an upper limit of 0.07% in order to achieve the effects of 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 the effect of 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.
Response to Arguments
Applicant’s arguments, filed August 3, 2026, with respect to Claim 1, and dependent claims thereof, rejected under 35 U.S.C. 103 over Tanaka545 and over Tanaka780 in view of Tanaka545, have been fully considered and are persuasive in view of Applicant’s amendments to the claims further limiting the Co and/or Fe amounts, and the solder ball size. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in over Tawara in view of Tanaka545 and Yoshitome (Claims 1-2 and 10), over Tanaka780 in view of Yoshitome and Tanaka545 (Claim 5), over Tanaka780 in view of Tanaka545 (Claim 21), over Tanaka780 in view of Tanaka545 and Yoshitome (Claim 22-24), over Tanaka545 in view of Yoshitome (Claim 25) and over Tanaka545 (Claim 26), as detailed above.
Regarding Tanaka545:
Applicant argues that insufficient Ni (0.06% Ni) results in fusion defects, whereas 0.07-0.08% Ni does not. Applicant argues similarly that excessive (greater than 0.08% Ni) causes fusion defects.
Applicant argues that the majority of the range disclosed by Tanaka545 lies outside the claimed range, and that a different embodiment of Tanaka545 limits Ni to 0.06%. Applicant further argues that criticality has been demonstrated, such that there is no teaching to select a value within the claimed range.
These arguments are respectively not found persuasive.
The embodiment and teaching relied upon by Tanaka545 regarding the upper limit of Ni teaches the claimed value of 0.07% Ni. Applicant does not appear to challenge the motivation to use this value in order to maximize the drop resistance while avoiding the effects outlined by Tanaka545 which occur by exceeding the 0.07% Ni value.
Additionally, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred (or alternative) embodiments, and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
Regarding criticality, there appears to be only one data point showing a fusion defect for 0.06% Ni in the previously submitted declaration, which is an insufficient number of data points to demonstrate criticality or unexpected results. Additionally, it is noted that example 5, for instance, with 1.8% Ag, 0.70% Cu and 0.05% Ni shows 0 fusion defects. Therefore, the 0.07-0.08% Ni range does not appear to be critical for achieving 0 fusion defects.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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]).
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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
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