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 .
Election/Restrictions
Applicant’s election of Group I, Claim 1, in the reply filed on 8/25/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2-7 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II, III, and IV, respectively, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/25/2026.
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 (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.
(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 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshinori et al. (JP2021190621A)(cited on IDS, including a machine translation).
With respect to Claim 1, Yoshinori teaches a method for manufacturing a conductive via-containing substrate, the method comprising: preparing a substrate with through holes formed therein and providing a metal paste comprising a volatile solvent to fill the hole and to cover at least a surface surrounding the hole of the substrate (step a), drying the metal paste by heating at temperature up to 180C, such drying interpreted to remove at least a part of the volatile solvent (step b), removing a part of the metal paste (e.g. excess paste) after heating to expose the surface to form a conductive via precursor in the hole, the conductive via precursor containing the metal particles and having a planarized exposed surface (step c), sintering the conductive via precursor (i.e. firing, step d). (para. 11, 67-84, 90-106, 139-142). Yoshinori teaches wherein the metal paste comprises copper particles and solder particles, the copper particles comprising first copper particles having an average particle size of 0.8 microns or more and second copper particles having an average size of 0.5 microns or less, and wherein the metal particles in the metal paste provided in step a may have a concentration of 94 mass% or more. (para. 33-63).
Thus, Yoshinori teaches a method of manufacturing a conductive via-containing substrate, the method comprising the same steps a, b, c, and d, and wherein a metal paste comprising metal particles and a volatile solvent comprises copper particles and solder particles having the same properties including average size and concentration as instantly claimed. Yoshinori only differs from the instant limitations in that for step c, the reference does not explicitly state that the conductive via precursor, in addition to the disclosed metal particles, contains residue of the volatile solvent.
However, one of ordinary skill in the art would recognize that a volatile solvent as taught by Yoshinori (see, e.g., para. 61 disclosing specific volatile solvents) would not be fully removed by the drying/heating step process conditions taught by the reference and thus, would necessarily comprise at least a minor content of volatile solvent residue. Moreover, as the reference teaches a method comprising the same steps and compositions, it would necessarily be expected to result in the same properties, including a conductive via precursor comprising both the metal particles and a residue of the volatile solvent.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
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 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshinori et al. (JP2021190621A)(cited on IDS, including a machine translation).
In the alternative to the above rejection of claim 1, if Yoshinori is interpreted to require one of the plurality of embodiments comprising either a smoothing/planarizing step of removing a portion of metal paste prior to heating/drying or after sintering/firing (e.g. para. 180), it would have been prima facie obvious to one of ordinary skill in the art to select any order of performing such process steps where the processes are substantially identical or equivalent in terms of function, manner and result. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP § 2144.04. In the instant case, performing a step of removing/smoothing the metal paste after a heating/drying step (step) and before a firing/sintering step (step d) would be substantially the same or equivalent in terms of function, manner and result, and therefore, a prima facie case of obviousness is established.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20130299219, drawn to a method for forming conductive vias comprising copper and a solder element/alloy, but failing to teach the specific particle size and concentrations of claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735
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