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 .
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueshima et al. (US 2012/0292087) in view of WATANABE et al. (US 2021/0138590).
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Re Claim 1, Ueshima et al. disclose a semiconductor module, comprising: a stacked substrate (38 60) (see Fig. 1E and Paragraphs [0053] and [0062]) ; a semiconductor device element (10 i.e., IC chip, Paragraph [0052]), mounted on the stacked substrate (58 60), the semiconductor device element (10) having an Ni layer (14, Paragraph [0052]) at a back surface thereof (see Fig. 1E); and a solder bonding (30, Paragraph [0052]) the back surface of the semiconductor device element (10) to the stacked substrate (see Fig. 1E), the solder being formed of a composition containing Sn-Ag-Cu-Bi material (see Fig. 1E and related text in Paragraphs [0036] and [0051]-[0067]).
However, Ueshima et al. do not disclose Sn-Sb-Ag-Cu based solder and percentage composition of each element in the Sn-Sb-Ag-Cu base solder bonding material.
WATANABE et al. disclose Sn-Sb-Ag-Cu solder (Paragraph [0052]) comprising:
Sb mass percentage of 5.0 mass % to 10 mass % (i.e., within the overlapped claimed range of 6 mass% but not more than 8.5 mass%); Ag mass percentage of 2.0 mass % of 4.0 mass % (i.e., within the overlapped claimed range of 2 mass % to 4.5 mass%); Cu mass percentage 1.2 % or less; and Sn is the rest of balance in order to provided lead free solder (see Paragraph [0052]).
Therefore, 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 to provide Ueshima et al. reference with solder comprising Sn-Sb-Ag-Cu as taught by WATANABE et al. in order to provide lead free solder.
Furthermore, the claimed mass percentage of Sn, Sb, Ag and Cu outside WATANABE et al. disclosure can be routinely optimized in order to achieved the desired bond strength and solidus temperature of the solder.
Therefore, it would have been to one having ordinary skill in the art at the time of the invention is filed to produce Sn-Sb-Ag-Cu predetermined mass composition range, since it has been held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969); Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). Furthermore, the specification contains no disclosure of either the critical nature of the claimed solder composition mass percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. See In re Woodruff, 919, f.2d 1575, 1578, 16.
Re Claim 2, as applied to claim 1 above, Ueshima et al. and WATANABE et al. disclose all the claimed limitations including wherein the composition of the solder is free of Ni (see Ueshima et al. Paragraph [0052]).
Re Claim 3, as applied to claim 1 above, Ueshima et al. and WATANABE et al. disclose all the claimed limitations including wherein the stacked substrate includes a conductive plate (60) facing the semiconductor device element (10), the conductive plate containing copper or a copper alloy (i.e., the lead of die pad portion is Cu, Paragraph [0031]).
Re Claim 4, A method of manufacturing a semiconductor module, the method comprising: preparing a stacked substrate (38 60) (see Fig. 1E and Paragraphs [0053] and [0062]); applying a solder to the stacked substrate (30, Paragraph [0052]), the solder being formed of a composition Sn-Ag-Cu-Bi material (see Fig. 1E and related text in Paragraphs [0036] and [0051]-[0067]).
However, Ueshima et al. do not disclose Sn-Sb-Ag-Cu based solder and percentage composition of each element in the Sn-Sb-Ag-Cu base solder bonding material.
WATANABE et al. disclose Sn-Sb-Ag-Cu solder (Paragraph [0052]) comprising:
Sb mass percentage of 5.0 mass % to 10 mass % (i.e., within the overlapped claimed range of 6 mass% but not more than 8.5 mass%); Ag mass percentage of 2.0 mass % of 4.0 mass % (i.e., within the overlapped claimed range of 2 mass % to 4.5 mass%); Cu mass percentage 1.2 % or less; and Sn is the rest of balance in order to provided lead free solder (see Paragraph [0052]).
Therefore, 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 to provide Ueshima et al. reference with solder comprising Sn-Sb-Ag-Cu as taught by WATANABE et al. in order to provide lead free solder.
Furthermore, the claimed mass percentage of Sn, Sb, Ag and Cu outside WATANABE et al. disclosure can be routinely optimized in order to achieved the desired bond strength and solidus temperature of the solder.
Therefore, it would have been to one having ordinary skill in the art at the time of the invention is filed to produce Sn-Sb-Ag-Cu predetermined mass composition range, since it has been held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969); Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). Furthermore, the specification contains no disclosure of either the critical nature of the claimed solder composition mass percentage or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the Applicant must show that the chosen dimensions are critical. See In re Woodruff, 919, f.2d 1575, 1578, 16.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure KAWASAKI et al. (US 2022/0088721) disclose Sn-Ag-As-Cu solder alloy containing 1.0 to 5.0 mass % of Ag, 0.5 to 3.0 mass % of Cu, 0.5 to 7.0 mass % of Sb, 0.004 to 0.025 mass percent of As, and balance of Sn.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOK KEBEDE whose telephone number is 571-272-1862. The examiner can normally be reached Monday Friday 8:00 AM 5:00 PM.
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/BROOK KEBEDE/
Primary Examiner, Art Unit 2894
/BK/
August 6, 2026
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