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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,355,453. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than the claims of the patent and therefore under a one-way obviousness type double patenting test, a prima facie case of obviousness exists.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,068,258. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than the claims of the patent and therefore under a one-way obviousness type double patenting test, a prima facie case of obviousness exists.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,355,453 in view of KAWABATA et al (US Pub 2017/0278804).
Claims 1-13 of U.S. Patent No. 11,355,453 teach an electronic assembly comprising: a circuit board comprising a trace having an electrical conductivity; a semiconductor integrated circuit mounted on the circuit board and electrically connected with the trace; a protection layer substantially electrically insulative and disposed on the integrated circuit; a first metal film disposed on the protection layer; a magnetic field shielding film disposed between the first metal film and the protection layer.
Claims 1-13 of U.S. Patent No. 11,355,453 do not teach a polymeric layer which is disposed between the first metal film and the magnetic field shielding film.
of KAWABATA (fig. 2) teaches a polymeric layer (insulating layer 70, “an insulating material such as a thermosetting material, a heat-resistant thermoplastic material”, [0065]. It is noted that thermosets and thermoplastics are a specific type of polymer.) which is substantially opaque from an optical aspect and is laser- writable, and is disposed between the first metal film (60) and the magnetic field shielding film (50), wherein the protection layer (40), the first metal film (60), the magnetic field shielding film (50), and the polymeric layer (70) are co-extensive with the circuit board (20) in length and width.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed the electronic assembly of U.S. Patent No. 11,355,453 with insulating layer 70 of KAWABATA in order to “make a resistance value at an interface between the metal film 60 and the magnetic film 50 equal to or higher than 10.sup.6Ω even when a material having a comparatively low resistance value is used as the material for the magnetic film 50, thereby making it possible to prevent deterioration in magnetic characteristics due to an eddy current.” as taught by KAWABATA, [0054].
The recitation “…which is substantially opaque from an optical aspect and is laser-writable”, this recitation is a statement of expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over KAWABATA since KAWABATA meets all the structural elements of the claim and is capable to be substantially opaque from an optical aspect and is laser-writable (insulating layer 70 such as thermosetting material and thermoplastic material), if so desired, and does not add structure to the claim. Thus, the intended use is given no patentable weight. Intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Therefore, Examiner is disregarding any structural limitations to the apparatus based on the contents thereof and intended use to be used with the apparatus. See MPEP 2114 & 2115.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,068,258 in view of KAWABATA et al (US Pub 2017/0278804).
Claims 1-20 of U.S. Patent No. 12,068,258 teach an electronic assembly comprising: a circuit board comprising a trace having an electrical conductivity; a semiconductor integrated circuit mounted on the circuit board and electrically connected with the trace; a protection layer substantially electrically insulative and disposed on the integrated circuit; a first metal film disposed on the protection layer; a magnetic field shielding film disposed between the first metal film and the protection layer.
Claims 1-20 of U.S. Patent No. 12,068,258 do not teach a polymeric layer which is disposed between the first metal film and the magnetic field shielding film.
of KAWABATA (fig. 2) teaches a polymeric layer (insulating layer 70, “an insulating material such as a thermosetting material, a heat-resistant thermoplastic material”, [0065]. It is noted that thermosets and thermoplastics are a specific type of polymer.) which is substantially opaque from an optical aspect and is laser- writable, and is disposed between the first metal film (60) and the magnetic field shielding film (50), wherein the protection layer (40), the first metal film (60), the magnetic field shielding film (50), and the polymeric layer (70) are co-extensive with the circuit board (20) in length and width.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed the electronic assembly of U.S. Patent No. 12,068,258 with insulating layer 70 of KAWABATA in order to “make a resistance value at an interface between the metal film 60 and the magnetic film 50 equal to or higher than 10.sup.6Ω even when a material having a comparatively low resistance value is used as the material for the magnetic film 50, thereby making it possible to prevent deterioration in magnetic characteristics due to an eddy current.” as taught by KAWABATA, [0054].
The recitation “…which is substantially opaque from an optical aspect and is laser-writable”, this recitation is a statement of expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over KAWABATA since KAWABATA meets all the structural elements of the claim and is capable to be substantially opaque from an optical aspect and is laser-writable (insulating layer 70 such as thermosetting material and thermoplastic material), if so desired, and does not add structure to the claim. Thus, the intended use is given no patentable weight. Intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Therefore, Examiner is disregarding any structural limitations to the apparatus based on the contents thereof and intended use to be used with the apparatus. See MPEP 2114 & 2115.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 6, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KAWABATA et al (US Pub 2017/0278804).
Regarding claim 1, KAWABATA (figs. 1 and 2) teaches an electronic assembly comprising:
a circuit board (substrate 20, [0038]) comprising a ground layer (power supply patterns 25G, “The power supply patterns 25G are typically ground patterns to which a ground potential is to be applied”, [0042]) disposed therein and having an electrical conductivity, and comprising a trace (wirings 25, [0042]) having an electrical conductivity;
a semiconductor integrated circuit (electronic components 31 and 32, [0043]) mounted on the circuit board (20) and electrically connected with the trace (25);
a protection layer (mold resin 40, [0038]) disposed on the integrated circuit (31 or 32) and configured to substantially cover the integrated circuit;
a first metal film (metal film 60, [0038]) disposed on the protection layer (40) and configured to substantially cover the integrated circuit; and
a magnetic field shielding film (magnetic film 50, [0038]) disposed between the first metal film (60) and the protection layer (40), wherein the first metal film (60) is extended over an edge of the electronic assembly toward a first main surface (front surface 21, [0038]) of the circuit board (20), and physically contacts a lateral edge of the ground layer (25G).
Regarding claim 3, KAWABATA teaches the electronic assembly of claim 1, wherein a main bottom surface of the protection layer (40) is not substantially planar, and a main top surface of the protection layer (40) is substantially planar (fig. 1).
Regarding claim 6, KAWABATA teaches the electronic assembly of claim 1, wherein the magnetic field shielding film (50) comprises at least one of soft magnetic-conductive ferrite, magnetic-conductive metal, a magnetic-conductive crystalline alloy, a magnetic-conductive nanocrystalline alloy, a magnetic-conductive amorphous alloy, and a magnetic-conductive compound (“The magnetic film 50 may be a film formed of a composite magnetic material in which magnetic fillers are dispersed in a thermosetting resin material, a thin film formed of a soft magnetic material or a ferrite, or a foil or a bulk sheet and serves as a magnetic shield.”, [0044]).
Regarding claim 10, KAWABATA teaches the electronic assembly of claim 1, wherein the first metal film (60) comprises a conductive ink comprising a plurality of materials of at least one of silver, gold, palladium, copper, indium, zinc, titanium, iron, chrome, aluminum, tin, cobalt, platinum, and nickel particles (“The metal film 60 serves as an electromagnetic shielding and is preferably mainly composed of at least one metal selected from a group consisting of Au, Ag, Cu, and Al” and “A formation method for the metal film 60 may be appropriately selected from known methods, such as a sputtering method, a vapor-deposition method, an electroless plating method, an electrolytic plating method.”, [0051]).
Regarding claim 11, KAWABATA teaches the electronic assembly of claim 1, wherein the circuit board (20) comprises a ground layer (25G) disposed therein and having an electrical conductivity, and wherein a portion of the first metal film (60) physically contacts an edge surface of the ground layer (25G).
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 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.
Claims 7, 8, 12, 14 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over KAWABATA et al (US Pub 2017/0278804).
Regarding claim 7, KAWABATA teaches the electronic assembly of claim 1, wherein the magnetic field shielding film has a high bulk permeability (“a soft magnetic metal having a high bulk permeability is more preferably used”, “As the magnetic film 50, a composite magnetic material having a permeability μ=25”, [0046] and [0108]).
The above-cited claims differ from the prior art by using various process parameters (such as the magnetic field shielding film has a relative permeability which is greater than 2). However, the process of conducting routine optimizations so as to produce an expected result is obvious to one of ordinary skill in the art. A person having ordinary skill in the art would have found it obvious to modify by performing routine experiments by using various processing parameters to obtain optimal result in order to provide their art recognized advantages and produce an expected result.
Regarding claim 8, KAWABATA teaches the electronic assembly of claim 1, wherein the magnetic field shielding film (50) has a low electric resistance and is conductive (“a comparatively low resistance value is used as the material for the magnetic film 50”, [0054]).
The above-cited claims differ from the prior art by using various process parameters (such as an electric resistance which is less than 200 wΩ cm). However, the process of conducting routine optimizations so as to produce an expected result is obvious to one of ordinary skill in the art. A person having ordinary skill in the art would have found it obvious to modify by performing routine experiments by using various processing parameters to obtain optimal result in order to provide their art recognized advantages and produce an expected result.
Regarding claim 12, KAWABATA (figs. 1 and 2) teaches an electronic assembly comprising:
a circuit board (substrate 20, [0038]) comprising a trace (wirings 25, [0042]) having an electrical conductivity;
a semiconductor integrated circuit (electronic components 31 and 32, [0043]) mounted on the circuit board (20) and electrically connected with the trace (25);
a protection layer (mold resin 40, [0038]) substantially electrically insulative and disposed on the integrated circuit (20);
a first metal film (metal film 60, [0038]) disposed on the protection layer (40);
a magnetic field shielding film (magnetic film 50, [0038]) disposed between the first metal film (60) and the protection layer (40); and
a polymeric layer (insulating layer 70, “an insulating material such as a thermosetting material, a heat-resistant thermoplastic material”, [0065]. It is noted that thermosets and thermoplastics are a specific type of polymer.) which is substantially opaque from an optical aspect and is laser- writable, and is disposed between the first metal film (60) and the magnetic field shielding film (50), wherein the protection layer (40), the first metal film (60), the magnetic field shielding film (50), and the polymeric layer (70) are co-extensive with the circuit board (20) in length and width.
Regarding claim 12, the recitation “…which is substantially opaque from an optical aspect and is laser-writable”, this recitation is a statement of expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over KAWABATA since KAWABATA meets all the structural elements of the claim and is capable to be substantially opaque from an optical aspect and is laser-writable (insulating layer 70 such as thermosetting material and thermoplastic material), if so desired, and does not add structure to the claim. Thus, the intended use is given no patentable weight. Intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Therefore, Examiner is disregarding any structural limitations to the apparatus based on the contents thereof and intended use to be used with the apparatus. See MPEP 2114 & 2115.
Regarding claim 14, KAWABATA teaches the electronic assembly of claim 12, wherein a main bottom surface of the protection layer (40) is not substantially planar, and a main top surface of the protection layer is substantially planar.
Regarding claim 18, KAWABATA teaches the electronic assembly of claim 12, wherein the magnetic field shielding film (50) comprises at least one of soft magnetic-conductive ferrite, magnetic-conductive metal, a magnetic-conductive crystalline alloy, a magnetic-conductive nanocrystalline alloy, a magnetic-conductive amorphous alloy, and a magnetic-conductive compound (“The magnetic film 50 may be a film formed of a composite magnetic material in which magnetic fillers are dispersed in a thermosetting resin material, a thin film formed of a soft magnetic material or a ferrite, or a foil or a bulk sheet and serves as a magnetic shield.”, [0044]).
Regarding claim 19, KAWABATA teaches the electronic assembly of claim 18, wherein the soft magnetic-conductive ferrite (“a thin film formed of a soft magnetic material or a ferrite”, [0044]).
The above-cited claims differ from the prior art by using various process parameters (such as a coercive force which is less than 1000 A/m). However, the process of conducting routine optimizations so as to produce an expected result is obvious to one of ordinary skill in the art. A person having ordinary skill in the art would have found it obvious to modify by performing routine experiments by using various processing parameters to obtain optimal result in order to provide their art recognized advantages and produce an expected result.
Regarding claim 20, KAWABATA teaches the electronic assembly of claim 12, wherein the magnetic field shielding film (50) has a high bulk permeability (“a soft magnetic metal having a high bulk permeability is more preferably used”, “As the magnetic film 50, a composite magnetic material having a permeability μ=25”, [0046] and [0108]).
The above-cited claims differ from the prior art by using various process parameters (such as the magnetic field shielding film has a relative permeability which is greater than 50). However, the process of conducting routine optimizations so as to produce an expected result is obvious to one of ordinary skill in the art. A person having ordinary skill in the art would have found it obvious to modify by performing routine experiments by using various processing parameters to obtain optimal result in order to provide their art recognized advantages and produce an expected result.
Claims 2 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over KAWABATA et al (US Pub 2017/0278804) in view of KAWABATA (US Pub 2018/0157782).
Regarding claim 2 and 13, KAWABATA teaches the first metal film (70) and the magnetic field shielding film (50), but does not teach an adhesive layer disposed between the first metal film and the magnetic field shielding film.
KAWABATA (‘782) (fig. 2) teaches the electronic assembly (11B) comprising an adhesive layer (adhesive film 70, “a thin insulating adhesive film 70 is interposed between the magnetic film 50 and the metal film 60” [0059]) disposed between the first metal film (60) and the magnetic field shielding film (50).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed the electronic assembly of KAWABATA with adhesive film 70 of KAWABATA (‘782) in order to “prevent deterioration in magnetic characteristics due to an eddy current. In addition, the insulating adhesive film 70 can also improve adhesiveness of the metal film 60.” as taught by KAWABATA (‘782), [0059].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over KAWABATA in view of Yen et al (US Pub 2014/0239465).
KAWABATA teaches the protection layer (“mold resin 40…with fillers”, [0043]), but does not teach wherein the protection layer comprises a plurality of silicon particles which are distributed in an epoxy resin.
Yen (fig. 14B) teaches wherein the protection layer (package body 531, [0086]) comprises a plurality of silicon particles (“fillers such as powdered silicon dioxide”, [0086]) which are distributed in an epoxy resin (“epoxy-based resin”, [0086)).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have formed the resin 40 of KAWABATA with the epoxy-based resin 531 of Yen because such material substitution is equivalently known for the same purpose. i.e. being used for encapsulating material, MPEP 2144.06 (Il).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUOC HOANG whose telephone number is (571)272-1780. The examiner can normally be reached on M-F, 8-5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Drew N. Richards can be reached on 571-272-1736. The fax phone number for the organization where this application or proceeding is assigned is 571 -273-8300.
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/QUOC D HOANG/Primary Examiner, Art Unit 2892