DETAILED ACTION
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of copending Application No. 18/8471,294 (hereafter referred to as the reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the line groove of the reference application is the same or at least encompasses the air gap of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/8471,294.
This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, the reference application claims a ceramic substrate unit comprising:
a ceramic substrate (claim 1, line 2); and
a heat sink bonded to the ceramic substrate (claim 1, line 3),
wherein the ceramic substrate includes:
an upper metal layer formed on an upper surface of a ceramic base and formed so that a semiconductor chip is mounted thereon (claim 1, lines 5-6); and
a lower metal layer formed on a lower surface of the ceramic base and having the heat sink bonded to a lower surface thereof (claim 1, lines 7-8), and
the lower metal layer has a plurality of grooves formed in an upper surface facing the lower surface of the ceramic base, and the plurality of grooves form an air gap between the lower surface of the ceramic base and the upper surface of the lower metal layer (claim 1, lines 9-10).
With respect to claim 2, the reference application (claim 10) claims a volume ratio obtained by dividing a total volume of the upper metal layer by a total volume of the lower metal layer ranges from 0.9 to 1.1.
As to claim 3, though the reference application fails to claim the plurality of grooves are formed by etching a portion of the upper surface of the lower metal layer in a thickness direction, etching is a process limitation in a product claim and therefore not given patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In re claim 4, though the reference application fails to claim the plurality of grooves are disposed in an axb matrix (a and b are each a natural number of 2 or more), it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the layout through routine experimentation (MPEP 2144.05).
Concerning claim 5, though the reference application fails to claim the lower surface of the lower metal layer is provided as a flat surface and bonded to the heat sink without the air gap, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a flat surface in the invention of the reference application because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
Pertaining to claim 6, the reference application (claim 11) claims comprising a brazing filter disposed between the upper surface of the ceramic base and a lower surface of the upper metal layer and between the lower surface of the ceramic base and the upper surface of the lower metal layer and bonding the upper metal layer and the lower metal layer to the ceramic base.
In claim 7, though the reference application fails to claim the brazing filler is disposed in an area of the upper surface of the lower metal layer excluding the plurality of grooves, it would have been obvious to one of ordinary skill in the art at the time of the invention to use this brazing filler layout in the invention of the reference application because it is conventionally known and used in the art because the grooves do not touch the ceramic substrate so there is no need to coat it. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
Regarding claim 8, the reference application claims a method of manufacturing a ceramic substrate unit, the method comprising:
preparing a ceramic base (claim 12, line 2);
preparing an upper metal layer formed so that a semiconductor chip is mounted (claim 12, line 3);
preparing a lower metal layer having a plurality of grooves formed in an upper surface thereof (claim 12, lines 4-5);
bonding the upper metal layer to an upper surface of the ceramic base and bonding the lower metal layer to a lower surface of the ceramic base (claim 12, lines 6-7); and
bonding a heat sink to a lower surface of the lower metal layer (claim 12, line 8),
wherein the plurality of grooves form an air gap between the lower surface of the ceramic base and an upper surface of the lower metal layer (claim 12, lines 4-5).
With respect to claim 8, the reference application (claim 15) claims the preparing of the lower metal layer includes forming the plurality of grooves so that a volume ratio obtained by dividing a total volume of the upper metal layer by a total volume of the lower metal layer ranges from 0.9 to 1.1.
As to claim 10, though the reference application fails to claim the preparing of the lower metal layer includes forming the plurality of grooves by etching a portion of the upper surface of the lower metal layer in a thickness direction, it would have been obvious to one of ordinary skill in the art at the time of the invention to use etching in the invention of the reference application because etching is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
In re claim 11, though the reference application fails to claim in the preparing of the lower metal layer, the plurality of grooves are disposed in an axb matrix (a and b are each a natural number of 2 or more), it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the layout through routine experimentation (MPEP 2144.05).
Concerning claim 12, the reference application (claim 16) claims the bonding of the upper metal layer to the upper surface of the ceramic base and bonding of the lower metal layer to the lower surface of the ceramic base includes: arranging a brazing filler between the upper surface of the ceramic base and a lower surface of the upper metal layer and between the lower surface of the ceramic base and the upper surface of the lower metal layer; and melting and brazing the brazing filler.
Pertaining to claim 13, the reference application (claim 17) claims the arranging of the brazing filler includes arranging the brazing filler having a thickness of 5 prn or more and 100 prn or less in any one method of paste application, foil attachment, and a P-filler.
Claim Rejections - 35 USC § 102
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) 1, 3, 6, 7, 8, 10, and 12 is/are rejected under 35 U.S.C. 102a1 as being clearly anticipated by Takayuki, JP 2003133662.
In claim 1, Takayuki (see marked up figure 1 below) teaches a ceramic substrate unit comprising:
a ceramic substrate 2; and
a heat sink 6 bonded to the ceramic substrate 2,
wherein the ceramic substrate 2 includes:
an upper metal layer 3 formed on an upper surface of a ceramic base 2 and formed so that a semiconductor chip 7 is mounted thereon; and
a lower metal layer 4 formed on a lower surface of the ceramic base 2 and having the heat sink 6 bonded to a lower surface thereof, and
the lower metal layer 4 has a plurality of grooves 9 formed in an upper surface facing the lower surface of the ceramic base 2, and the plurality of grooves 9 form an air gap between the lower surface of the ceramic base 2 and the upper surface of the lower metal layer 4.
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Regarding claim 3, though Takayuki fails to teach the plurality of grooves are formed by etching a portion of the upper surface of the lower metal layer in a thickness direction, etching is a process limitation in a product claim and therefore isn’t given any patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
With respect to claim 6, Takayuki (page 8 of the translation) teaches a brazing filler disposed between the upper surface of the ceramic base and a lower surface of the upper metal layer and between the lower surface of the ceramic base and the upper surface of the lower metal layer and bonding the upper metal layer and the lower metal layer to the ceramic base.
As to claim 7, Takayuki (page 8 of the translation) teaches the brazing is patterned) teaches the brazing filler is disposed in an area of the upper surface of the lower metal layer excluding the plurality of grooves.
In re claim 8, Takayuki (see marked up figure 1 above) teaches a method of manufacturing a ceramic substrate unit, the method comprising:
preparing a ceramic base 2;
preparing an upper metal layer 3 formed so that a semiconductor chip 7 is mounted;
preparing a lower metal layer 4 having a plurality of grooves 9 formed in an upper surface thereof;
bonding the upper metal layer 3 to an upper surface of the ceramic base 2 and bonding the lower metal layer 4 to a lower surface of the ceramic base 2; and
bonding a heat sink 6 to a lower surface of the lower metal layer 4,
wherein the plurality of grooves 9 form an air gap between the lower surface of the ceramic base 2 and an upper surface of the lower metal layer 4.
Concerning claim 10, though Takayuki fails to teach the preparing of the lower metal layer includes forming the plurality of grooves by etching a portion of the upper surface of the lower metal layer in a thickness direction, etching is a process limitation in a product claim and therefore not given patentable weight. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Pertaining to claim 12, Takayuki (page 8 of the translation) teaches the bonding of the upper metal layer to the upper surface of the ceramic base and bonding of the lower metal layer to the lower surface of the ceramic base includes: arranging a brazing filler between the upper surface of the ceramic base and a lower surface of the upper metal layer and between the lower surface of the ceramic base and the upper surface of the lower metal layer; and melting and brazing the brazing filler.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 2, 4, 5, 9, 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takayuki, JP 2003133662 as applied to claims 1 and 8 above.
In claims 2 and 9, though Takayuki fails to teach the preparing of the lower metal layer includes forming the plurality of grooves so that a volume ratio obtained by dividing a total volume of the upper metal layer by a total volume of the lower metal layer ranges from 0.9 to 1.1, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the volume ratio through routine experimentation (MPEP 2144.05).
Regarding claims 4 and 11, though Takayuki fails to teach in the preparing of the lower metal layer, the plurality of grooves are disposed in an axb matrix (a and b are each a natural number of 2 or more) though the reference application fails to claim in the preparing of the lower metal layer, the plurality of grooves are disposed in an axb matrix (a and b are each a natural number of 2 or more), it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the layout through routine experimentation (MPEP 2144.05).
With respect to claim 5, though Takayuki fails to teach the lower surface of the lower metal layer is provided as a flat surface and bonded to the heat sink without the air gap, it would have been obvious to one of ordinary skill in the art at the time of the invention to use a flat surface in the invention of the reference application because it is conventionally known and used in the art. The use of conventional materials to perform their known functions is obvious (MPEP 2144.07).
As to claim 13, though Takayuki fails to teach the arranging of the brazing filler includes arranging the brazing filler having a thickness of 5 um or more and 100 um or less in any one method of paste application, foil attachment, and a P-filler, it would have been obvious to one ordinary skill in the art at the time of the invention to optimize the thickness through routine experimentation (MPEP 2144.05).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art teach the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A ZARNEKE whose telephone number is (571)272-1937. The examiner can normally be reached M-F.
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/DAVID A ZARNEKE/ Primary Examiner, Art Unit 2891 9/20/26
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