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 . 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.
Response to Amendment
The Amendment filed 04/29/2026 has been entered. Claims 1-11 remain pending and rejected in the application.
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) 1-2, 6, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishimura (WO2012102212 - see machine translation attached).
Regarding claim 1, Nishimura, drawn also to the art of a resin composition sheet and a method of forming a laminate with a resin sheet (10) (insulating layer), metal foil (30) +wiring layer (40) (circuit pattern), metal substrate (20) (base substrate), and an electronic component (LED light source member) (Title; Abstract), discloses a method of providing a resin sheet and laminating a resin sheet with a metal wiring board with the insulating layer between a metal foil wiring layer and metal substrate, and further a step of an electronic component on the metal foil wiring layer ([0146 & 0155]). Essentially, Nishimura discloses a method of laminating 4 different layers, a resin sheet, a metal foil wiring layer, a metal substrate, and an electronic component, with the electronic component provided on the metal foil wiring layer and the resin sheet bonding the metal substrate and metal foil wiring layer, and being disposed between the two, akin to the instantly claimed method in instant claim 1 (see also [0152-0159]). Regarding the specific order of the steps or operation of the steps, it is noted that the instant claim does not explicitly claim a specific order of steps, i.e. subsequent/simultaneous etc. but rather only instantly claims a set of steps (i.e. the 4 steps identified above). Thus, the method of Nishimura discloses a process of laminating a base substrate, an insulating layer, a circuit pattern and an electronic component in that order. However, in the event the applicant disagrees with the above rationale, and in the interest of advancing prosecution, an obviousness rationale for the limitations of claim 1 is also provided below in the 35 U.S.C 103 rejection section.
Regarding claim 2, Nishimura discloses that the resin sheet is semi-cured (B-stage) [0140] and applied to the metal substrate and then fully cured (C-stage) [0146] when laminating with the metal foil wiring layer [0176-0177].
Regarding claims 6 & 8 (both claims have same limitations but different dependencies), Nishimura has disclosed the resin sheet being a cured film of a latent curable resin composition i.e. a resin composition that is cured in stages (see claim 2 rejection above).
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura (WO2012102212 - see machine translation attached).
Regarding claim 1, Nishimura, drawn also to the art of a resin composition sheet and a method of forming a laminate with a resin sheet (10) (insulating layer), metal foil (30) +wiring layer (40) (circuit pattern), metal substrate (20) (base substrate), and an electronic component (LED light source member) (Title; Abstract), discloses a method of providing a resin sheet and laminating a resin sheet with a metal wiring board with the insulating layer between a metal foil wiring layer and metal substrate, and further a step of an electronic component on the metal foil wiring layer ([0146 & 0155]). Essentially, Nishimura discloses a method of laminating 4 different layers, a resin sheet, a metal foil wiring layer, a metal substrate, and an electronic component, with the electronic component provided on the metal foil wiring layer and the resin sheet bonding the metal substrate and metal foil wiring layer, and being disposed between the two, akin to the instantly claimed method in instant claim 1 (see also [0152-0159]).
Regarding the specific order of the steps or operation of the steps, it is noted that the instant claim does not explicitly claim a specific order of steps, i.e. subsequent/simultaneous etc. but rather only instantly claims a set of steps (i.e. the 4 steps identified above). Further, it is noted that a rearrangement of steps or a splitting of simultaneous steps or vice versa is held to be obvious and a product of ordinary skill in the absence of new or unexpected results (MPEP 2144.04 IV (C)).
Regarding claim 2, Nishimura discloses that the resin sheet is semi-cured (B-stage) [0140] and applied to the metal substrate and then fully cured (C-stage) [0146] when laminating with the metal foil wiring layer [0176-0177].
Regarding claims 3-5 & 7 (claims recite similar limitations with different dependencies), Nishimura discloses a step of applying a resin composition to a base sheet (plastic film, PET – [0132 & 0165]), and heating a resin composition (drying) to form a semi-cured resin sheet [0165], and then applying the resin sheet (base sheet + semi-cured resin) to a base substrate and heating and pressurizing [0169], and peeling the PET film [0169], and then further heating and pressurizing a laminate of the resin sheet between a metal foil wiring layer and metal substrate to temporarily bond and fully cure the resin sheet [0176 & 0169 & 0155]. Nishimura discloses the temperature range for drying to be between 50oC to 110oC [0123], and discloses the temperature range for semi-curing to be between 70oC to 160oC [0126 & 0176] and a pressure to be 1MPa [0176 & 0132 & 0135], and further the temperature range for fully curing and temporarily bonding to be between 80oC to 250oC and a pressure to be between 0.5MPa to 8 MPa [0155 & 0169]. Thus the ranges for the temperatures and pressures as claimed in instant claims 3-5 & 7 are obviated as the ranges for the temperatures and pressures disclosed by Nishimura form overlapping and encompassing ranges with the instantly claimed ranges. The courts have held that 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) (MPEP 2144.05(I)).
Regarding claims 6 & 8 (both claims have same limitations but different dependencies), Nishimura has disclosed the resin sheet being a cured film of a latent curable resin composition i.e. a resin composition that is cured in stages (see claim 2 rejection above).
Regarding claims 9-11 (the claims have same limitations but different dependencies), Nishimura has disclosed the resin sheet being a cured film of a latent curable resin composition i.e. a resin composition that is cured in stages (see claim 2 rejection above).
Response to Arguments
Applicant's arguments filed 04/29/2026 have been fully considered but they are not persuasive.
Applicant argues that Nishimura does not disclose first forming an electronic component on the circuit pattern and then laminating this intermediate laminate with an intermediate laminate of the base substrate and insulating layer.
The examiner disagrees. While Nishimura does disclose forming a laminate of a base substrate, insulating layer, and circuit pattern and then forming an electronic component on the circuit pattern, it does not take away from the obviousness of the claimed method, as the argument of the applicant merely amounts to a rearrangement of method steps. The only difference between Nishimura and the present application is when the electronic component is provided on the circuit pattern, and while the instant application makes this a simultaneous step wherein the lamination is performed with the electronic component formed on the circuit pattern, Nishimura discloses the electronic component being formed after lamination, thus being a separate step or subsequent step. This above difference merely amounts to a rearrangement of method steps, which is held to be obvious as explained in the instant claim 1 rejection above. Thus, Nishimura still at the very least obviates the instant claims 1-11.
Conclusion
THIS ACTION IS MADE FINAL. 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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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