DETAILED ACTION
This is in response to communication received on 3/11/26.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 12/30/25.
Claim Rejections - 35 USC § 102
The claim rejection(s) under 35. U.S.C. 102(a)(1) as being anticipated by Yoshinori et al. JP2021190621A hereinafter YOSHINORI on claims 1 and 4-5 are withdrawn because the independent claim 1 has been amended.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshinori et al. JP2021190621A hereinafter YOSHINORI. Further, the claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Yoshinori et al. JP2021190621A hereinafter YOSHINORI on claim 2 is maintained. That rejection is repeated below for convenience.
As for claim 1, YOSHINORI teaches "The present invention relates to a metal particle film, a method for producing a metal particle film, and a method for producing a substrate having a through electrode" (paragraph 1 ), i.e. A method for manufacturing a substrate with conductive vias.
YOSHINORI teaches "A method for producing a substrate having through electrodes, the method comprising: a preparation step of preparing a substrate including an insulating substrate having through holes formed therein, the substrate having the through holes communicating with both main surfaces; and a conductor formation step of forming a conductor in the through holes, wherein the conductor formation step comprises a metal body formation step of forming a metal body having voids so as to fill at least the through holes, the metal body formation step comprising: a filling step of pressing the metal particle film according to any one of [1] to [7] against the substrate so that the metal particle-containing layer of the metal particle film is in contact with the substrate, and filling the through holes of the substrate with a metal particle composition" (paragraph 11, lines 1-11 ), and "A method for producing the metal particle film according to any one of [1] to [7], comprising: applying a metal paste containing metal particles and a volatile dispersion medium, the metal particles having a concentration of less than 92 mass%, onto a support film to provide a metal paste layer; and drying the metal paste layer to form a metal particle containing layer having a thickness of 100 μm or less and a metal particle concentration of 94 mass% or more" (paragraph 10), i.e. a step a of preparing a substrate provided with holes, and providing a metal paste portion containing metal particles and a volatile solvent so as to fill the inside of the holes and cover at least a surface of the substrate around the holes.
YOSHINORI teaches "The metal particle composition 3 may be dried as appropriate to prevent the metal particles from flowing when the metal particle composition 3 is sintered and to prevent voids from occurring in the metal sintered body contained in the metal body" (paragraph 98, lines 1-3), i.e. a step b of heating the metal paste portion to remove a part of the volatile solvent.
YOSHINORI teaches "In this step, at least a portion of the conductor 35 formed on the main surface of the silicon substrate 40 can be removed" (paragraph 140, lines 1-2), i.e. a step c of removing a part of the metal paste portion after heating so as to expose the surface, and forming conductive via precursors having a flattened exposed surface and containing a remainder of the metal particles and the volatile solvent inside the holes.
YOSHINORI teaches "After the filling step, the metal particle composition 3 is fired to sinter the metal particles contained in the metal particle composition 3" (paragraph 100, lines 1-2; see further Fig. 3).
Examiner notes that YOSHINORI teaches smoothing/removing the top of the composition after sintering, while the claim requires a step c of removing a part of the metal paste portion… and then a step d of firing the conductive via precursors.
However, in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See MPEP 2144 IV. In this case, performing the smoothing/step c prior to the sintering/step d within YOSHINORI would have the substantially identical or equivalent in terms of function, manner and result as the reverse order of step, and thereby a prima facie case of obviousness exists.
As for claim 2, YOSHINORI Teaches "However, if the concentration of metal particles in the metal paste is increased in order to form a conductor with excellent conductivity, uncoated areas are likely to occur, and if a thick film is applied to prevent this, material loss tends to be significant. On the other hand, if the concentration of metal particles in the metal paste is reduced, although the coatability improves, it tends to require a long drying time and it becomes difficult to form a conductor with excellent conductivity" (paragraph 6, lines 1-6), i.e. wherein the concentration of the metal particles is a result effective variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the mass percentage of the metal particles in the metal paste portion provided in step a such that the desired coatability, drying and conductivity is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
YOSHINORI teaches "drying the metal paste layer to form a metal particlecontaining
layer having a thickness of 100 μm or less and a metal particle concentration of 94 mass% or more" (paragraph 10, lines 5-7), i.e. a range that overlaps with in the step b, the metal paste portion is heated so that the concentration of the metal particles is 97.5 mass% or more. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
As for claim 4, YOSHINORI teaches "The method for producing a metal particle film according to [8], wherein the metal paste is applied to the support film by screen printing" (paragraph 10, lines 7-8) and further shows applying the paste to another surface and pressing it into the substrate in Fig. 3 a-c, i.e. wherein in the step a, a metal particle film including a support film and a metal particle-containing layer provided on the support film and containing the metal particles and the volatile solvent is prepared, and the metal paste portion is provided by pressing the metal particle-containing layer of the metal particle film against the substrate.
As for claim 5, YOSHINORI teaches "The method for manufacturing a substrate having a through electrode according to this embodiment may further include a wiring formation step" (paragraph 148, lines 1-2) and "The method for manufacturing a substrate having a through electrode according to this embodiment further includes a wiring formation process having the above steps, thereby making it possible to form wiring 9 including conductors 35 on the main surface of the silicon substrate 40" (paragraph 154), i.e. A method for manufacturing a wiring board with conductive vias, the method comprising a step of forming a wiring on a substrate with conductive vias obtained by the method according to claim 1.
The claim rejection(s) under AIA 35 U.S.C. 103 as being obvious over Yoshinori et al. JP2021190621A hereinafter YOSHINORI as evidenced by PubChem Compound Summary Ethylene Glycol hereinafter PUBCHEM on claim 3 is maintained. The rejection is repeated below for convenience.
As for claim 3, YOSHINORI teaches "The volatile dispersion medium contained in the metal particle-containing layer is not particularly limited, and examples thereof include ... ethylene glycol" (paragraph 61, liens 1-3).
YOSHINORI is silent on the vapor pressure of the solvent.
PUBCHEM, in section 3.2.11 Vapor Pressure, teaches that Ethylene glycol has a vapor pressure at 20°C at 6.5 Pa.
Therefore, YOSHINORI inherently teaches wherein the volatile solvent contains a high vapor pressure solvent having a vapor pressure at 20°C of 4 Pa or more and 30 Pa or less.
YOSHINORI teaches "The step of drying the metal paste layer to form the metal particle-containing layer can be carried out at room temperature or at a temperature of room temperature to 100°C. or less, and the atmosphere may be air or nitrogen" (paragraph 78), i.e. a range that overlaps with a heating temperature in the step bis lower than 100°C. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365- 66 (Fed. Cir. 1997). See MPEP 2144.05.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically the anticipation rejection has been withdrawn and a new ground of obviousness rejection has been made under 103 with new reasoning.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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