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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the insulating element covering a top side of the component metallization (of claim 19) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Additionally, the drawings (see Figs. 1-6) are objected to under 37 CFR 1.84(l), because the character of the lines are insufficient for satisfactory reproduction characteristics, and 37 CFR 1.84(p)(1).
“(l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.”
“(p) Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.”
Claim Objections
Claims 27 and 30 are objected to because of the following informalities:
Claim 27 recites the limitations “A metal-ceramic substrate”, “an insert”, “a printed circuit board”, “an insulating element”, and “a side surface”. These limitations are already introduced in claim 16 on which claim 27 depends.
Claim 30 recites the limitations “a printed circuit board”, “a metal-ceramic substrate”, “a main extension plane”, and “an insulating element”. These limitations are already introduced in claim 16 on which claim 30 depends.
Appropriate correction is required.
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.
Claims 16, 23-24, 26-28 and 30 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.
Claim 16 recites the limitation " wherein the metal-ceramic substrate has a ceramic element, and wherein the insert is a metal-ceramic substrate with an insulating element " in lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination below, Examiner interprets the limitation as reciting:
“wherein the insert is a metal-ceramic substrate and has a ceramic element, and wherein the metal-ceramic substrate has an insulating element”.
Claim 23 recites the limitation "the cooperation" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites the limitation "the first height" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the component metallisation" in line 2. There is insufficient antecedent basis for this limitation in the claim. Additionally, Examiner suggests amending “metallisation” to “metallization”.
Claims 23 and 27-28 recite the limitation “a/the side surface not running parallel to the main extension plane” in lines 2-3. The limitation “not running parallel” renders these claims indefinite because not parallel encompasses both a surface perpendicular to the main extension plane and a surface either slanted or angled with respect to the main extension plane.
For the purpose of Examination below, Examiner interprets the limitations of claims 23 and 27-28 as reciting:
“a/the side surface perpendicular to the main extension plane”.
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.
Claims 16-25 and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Gottwald (US 20190363043 A1) in view of Wang (US 10177067 B2).
As to Claim 16 (as best understood), Gottwald discloses:
A printed circuit board (circuit board module 60; Fig. 9) for electrical components 30 and/or conductor paths, comprising
- a base body (base frame 40) which extends along a main extension plane (horizontal plane), and
- an insert (metal-ceramic module 10) which is integrated into the base body 40 in an assembled state (Par. 0049 “The circuit board carrier material 42 has at least one through recess 48 for accommodating at least one metal-ceramic module. A metal-ceramic module 10 is inserted into the recess 48”),
wherein the insert 10 is a metal-ceramic substrate (metal-ceramic module 10) and has a ceramic element (a ceramic carrier 14), and wherein the metal-ceramic substrate 10 has an insulating element (resin 58), characterized in that the metal-ceramic substrate 10 is covered at least partially by the insulating element 58 on a side surface facing the base body 40 in the assembled state (sides of 10 facing 40 are covered by resin 58; see Fig. 9), and in that, measured in a direction running perpendicular to the main extension plane (vertical direction), the ceramic element 14 has a first thickness and the base body 40 has a second thickness (respective thicknesses of 14 and 40).
Gottwald does not disclose:
wherein a ratio between the first thickness and the second thickness has a value between 0.01 and 0.3.
However, Wang discloses:
measured in a direction running perpendicular to the main extension plane (vertical direction; see Fig. 5), the ceramic element 130 (col. 5, Lines 34-36 “The heat conducting element 130 may be made of materials including ceramics”) has a first thickness T1 and the base body (core 111) has a second thickness H, wherein a ratio between the first thickness T1 and the second thickness H has a value between 0.01 and 0.3 (col. 5, Lines 53-55 “the thickness T1 of the heat conducting element 130 is 0.1-0.9 times the thickness H of the core layer 111”);
in order to make the formation of the required cavity more conducive (col. 5, Lines 51-53).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Gottwald as further suggested by Wang e.g., providing:
wherein a ratio between the first thickness and the second thickness has a value between 0.01 and 0.3;
in order to make the formation of the required cavity more conducive.
Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It has also been held that discovering an optimum value of a result-effective variable (e.g., the relative thickness of the ceramic element to the base body for effecting the desired results of heat dissipation and insulation) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
As to Claim 17, the obvious modification of Gottwald in view of Wang discloses:
wherein the metal-ceramic substrate (10 of Gottwald) has a component metallization (metal top and bottom ply 16,18), wherein the insulating element 58 surrounds the ceramic element 14 at least partially on the sides facing the base body 40 in the assembled state (see Fig. 9 of Gottwald, 58 surrounds sides of 14 facing 40).
As to Claim 18, the obvious modification of Gottwald in view of Wang discloses:
wherein the metal-ceramic substrate (10 of Gottwald) has a component metallization (metal top and bottom ply 16,18), wherein the insulating element 58 surrounds the component metallization 16,18 at least partially on the sides facing the base body 40 in the assembled state (see Fig. 9 of Gottwald, 58 surrounds sides of 16,18 facing 40).
As to Claim 19, the obvious modification of Gottwald in view of Wang discloses:
wherein the insulating element (58 of Gottwald) covers at least partially a top side of the component metallization (at least top side of 16) facing away from the ceramic element 14 (58 indirectly covers top side of 16; Gottwald).
As to Claim 20, the obvious modification of Gottwald in view of Wang discloses:
wherein the ceramic element (14 of Gottwald) of the metal-ceramic substrate 10 protrudes by a first length in a direction parallel to the main extension plane (horizontal plane) with respect to a component metallization (top ply 16) of the metal-ceramic substrate 10 (14 protrudes by a length from top ply 16; Fig. 9 of Gottwald).
As to Claim 21, the obvious modification of Gottwald in view of Wang discloses:
wherein the insert (10 of Gottwald) and/or the insulating element cooperates via a form fit with the base body 40 in a direction perpendicular to the main extension plane (vertical direction; Par. 0049 “The circuit board carrier material 42 has at least one through recess 48 for accommodating at least one metal-ceramic module. A metal-ceramic module 10 is inserted into the recess 48”; Gottwald).
As to Claim 22, the obvious modification of Gottwald in view of Wang discloses:
wherein the insert (10 of Gottwald) and/or the insulating element is material bonded to the base body 40 (Par. 0039 “Additionally or alternatively to the above-described packaging layer 20, adhesion promoters and other suitable packaging materials can be applied to all metal surfaces to be joined of the metal plies 16, 18, 22, 23 and/or of the electronic component 30”; Gottwald).
Alternatively, the aforementioned method limitations do not have any actual patentable weight, since it has been held that even though the claims are limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and 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, 227 USPQ 964, 966 (Fed. Cir. 1985).
The presence of process limitations on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens, 145 USPQ 656 (CCPA 1965).
As to Claim 23 (as best understood), the obvious modification of Gottwald in view of Wang discloses:
wherein in order to form a cooperation via form fit, the insulating element (58 of Gottwald) is profiled on a side surface perpendicular to the main extension plane (horizontal plane; in assembled product of Gottwald, metal-ceramic module 10 is disposed in recess and surrounded by 58; process claim of profiling side surface carries no weight).
Alternatively, the aforementioned method limitations do not have any actual patentable weight, since it has been held that even though the claims are limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and 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, 227 USPQ 964, 966 (Fed. Cir. 1985).
The presence of process limitations on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens, 145 USPQ 656 (CCPA 1965).
As to Claim 24 (as best understood), the obvious modification of Gottwald in view of Wang discloses:
wherein the insulating element (58 of Gottwald) has, in a direction dimensioned parallel to the main extension plane (horizontal plane), a width averaged along a first height of the insulating element (width of 58 between bottom and top of 10).
Gottwald and Wang do not disclose:
a width averaged along a first height of the insulating element, which has a value between 10 µm and 800 µm.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a width between 10 µm and 800 µm, in order to provide the desired amount of insulation material and space for metal-ceramic module (Par. 0049,0051).
Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It has also been held that discovering an optimum value of a result-effective variable (e.g., the relative dimensions of the insulating element for effecting the desired results of insulation) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
As to Claim 25, the obvious modification of Gottwald in view of Wang discloses:
wherein the insulating element (58 of Gottwald) has, in a direction dimensioned parallel to the main extension plane (horizontal plane), a width averaged along a first height of the insulating element (width of 58 between bottom and top of 10).
Gottwald and Wang do not disclose:
a width averaged along a first height of the insulating element, which has a value greater than 250µm.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a width greater than 250µm, in order to provide the desired amount of insulation material and space for metal-ceramic module (Par. 0049,0051). See case law in rejection of claim 24 above.
As to Claim 27 (as best understood), the obvious modification of Gottwald in view of Wang discloses:
The metal-ceramic substrate (10 of Gottwald), which is configured as the insert for the printed circuit board 60 according to claim 16 (see rejection of claim 16 above), wherein the insert 10 is surrounded at least partially by the insulating element 58 on a side surface perpendicular to the main extension plane (horizontal plane; 58 surrounds vertical sides of 10; Gottwald).
As to Claim 28 (as best understood), the obvious modification of Gottwald in view of Wang discloses:
wherein the insert (10 of Gottwald) is completely surrounded by the insulating element 58 on the side surface perpendicular to the main extension plane (horizontal plane; 58 completely surrounds vertical sides of 10; Gottwald).
As to Claim 29 (as best understood), the obvious modification of Gottwald in view of Wang discloses:
wherein the insulating element (58 of Gottwald) surrounds the metal-ceramic substrate 10 in an enclosed manner at least in a height portion of the metal-ceramic substrate 10 (58 surrounds 10 in a height direction of 10; Gottwald).
As to Claim 30, the obvious modification of Gottwald in view of Wang discloses:
A method of manufacturing the printed circuit board (60 of Gottwald) according to claim 16 (see rejection of claim 16 above),
comprising:
- providing the metal-ceramic substrate 10 having the main extension plane (horizontal plane),
- covering the metal-ceramic substrate 10 at least partially with the insulating element 58 in order to form the insert 10 (58 covers a portion of 10 in assembled product, see claim 9 of Gottwald), and
- inserting the insert 10 with the insulating element 58 into the base body 40 (assembled product contains 10, 58 within 40).
Alternatively, the aforementioned method limitations do not have any actual patentable weight, since it has been held that even though the claims are limited by and defined by the recited process, the determination of patentability of the product is based on the product itself, and 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, 227 USPQ 964, 966 (Fed. Cir. 1985).
The presence of process limitations on product claims, which product does not otherwise patentably distinguish over prior art, cannot impart patentability to the product. In re Stephens, 145 USPQ 656 (CCPA 1965).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Gottwald (US 20190363043 A1) in view of Wang (US 10177067 B2) as applied to claim 16 above, and further in view of Kitahara (US 20210050278 A1).
As to Claim 26 (as best understood), the obvious modification of Gottwald in view of Wang discloses:
wherein dimensioned in a direction perpendicular to the main extension plane (horizontal direction; Gottwald) a component metallization (16,18 of Gottwald) has a third thickness (thickness of 16,18).
Gottwald and Wang do not disclose:
wherein a ratio between the first thickness and the third thickness has a value between 0.01 and 0.3.
However, Kitahara discloses:
the first thickness (Par. 0040 “a thickness (a board thickness) of the ceramic substrate board 11 made of Si.sub.3N.sub.4 (silicon nitride) is 0.1 mm to 1.5 mm”);
a third thickness (Par. 0040 “the thickness t11 of the circuit layer 12 made of OFC (pure copper) is 0.5 mm to 2.0 mm”);
wherein a ratio between the first thickness and the third thickness has a value between 0.01 and 0.3 (at least a first thickness of 0.1 mm and a third thickness of 0.5 mm provides a ratio of 0.2);
in order to provide/produce a ceramic-copper bonded body with reduced warpage (Par. 0014).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Gottwald in view of Wang as further suggested by Kitahara e.g., providing:
wherein a ratio between the first thickness and the third thickness has a value between 0.01 and 0.3;
in order to provide/produce a ceramic-copper/metal bonded body with reduced warpage.
Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It has also been held that discovering an optimum value of a result-effective variable (e.g., the relative thickness of the ceramic element to the metallization layer for effecting the desired results of dimensions of the device) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hong (US 20220338341 A1) discloses an embedded ceramic substrate within a circuit board body.
Saito (US 20190371688 A1) discloses a ceramic board within a metal base plate.
Sun (US 20120199955 A1) discloses a heat dissipation member, including ceramic, disposed within a circuit board.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW S MUIR whose telephone number is (571)270-1329. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW SINCLAIR MUIR/ Examiner, Art Unit 2841
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