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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-11, in the reply filed on 23 Feb. 2026 is acknowledged.
Applicant argues that the Group II process claims are directed at a process specially adapted for the manufacture of said product. Thus, Groups I and II satisfy the relationship under 37 C.F.R. § 1.475(b)(1) or (2), and therefore, the restriction requirement should be withdrawn.
However, while 37 CFR 1.475(b)(1) or (2) states that a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn to a product and a process specially adapted for the manufacture of the product or a product and a process of use of said product, this does not preclude that there is lack of unity of invention under PCT Rule 13.1 and 13.2 (see also MPEP 1850 II). Further, applicants have not provided any evidence that the product is "specially adapted for" the manufacture of the process. Therefore, it is the examiner’s position that the restriction requirement is proper, there is a lack of unity of invention, and the restriction requirement is therefore maintained. The requirement is therefore made FINAL.
Claims 12-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on 23 Feb. 2026.
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.
Claim 3 is 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 3 recites the limitation "compound (b1)" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested this phrase be amended to recite “dispersant (b1).”
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 3-6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US Patent Application 2014/0338192 A1, published 20 Nov. 2014, hereinafter Chung) in view of Fukazawa et al. (EP 3817522 A1, published 05 May 2021, hereinafter Fukazawa).
Regarding claims 1, 3-6, and 8-10, Chung teaches a method for manufacturing a metal printed circuit board comprising printing a circuit pattern (plating seed layer) on a release film (temporary support); applying a heat conductive insulating layer (resin layer) on the circuit pattern, and laminating a heat conductive base layer on the heat conductive base layer (Abstract). Chung teaches the circuit pattern is formed by printing a silver-containing metal paste (paragraphs 0017-0018). Chung teaches his heat conductive insulating layer (resin layer C) is an epoxy resin (paragraphs 0027-0028). Chung teaches that his heat conductive base layer (support D) is a resin-coated steel plate (paragraph 0038). Chung teaches his release film (temporary support) is formed by applying a release agent (release layer) onto an aluminum or polymeric film (paragraphs 0013-0014).
Chung does not disclose incorporating a dispersant in his circuit pattern (plating seed layer).
Fukazawa teaches forming a circuit pattern by applying a silver particle dispersion on an insulating substrate (paragraphs 0023-0024). Fukazawa teaches incorporating a resin having a reactive functional group [Y] for the dispersant of the metal particles and a resin having the reactive functional group [X] in the layer on which the silver particle dispersion is applied (paragraph 0075), and the resin having a reactive functional group [X] is an epoxy (paragraph 0077). Fukazawa teaches that the reactive functional groups [X] and [Y] are selected to be reactive towards each other (paragraph 0075).
Given that Chung and Fukazawa are drawn to multi-layer printed circuit boards with silver particle pastes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a reactive dispersant as taught by Fukazawa in the silver paste of the printed circuit board taught by Chung. Since Chung and Fukazawa are both drawn to using multi-layer printed circuit boards with silver particle pastes, one of ordinary skill in the art would have a reasonable expectation of success in using a reactive dispersant as taught by Fukazawa in the silver paste of the printed circuit board taught by Chung. Further, Fukazawa teaches incorporating a reactive dispersant with a functional group in the silver paste that is reactive with a functional group in the resin layer below improves the metal pattern adhesion to the resin layer (paragraph 0076).
Given that some embodiments of the printed circuit of Chung in view of Fukazawa have a metal release film, the amount of carbon in the seed layer near the epoxy resin layer-seed layer interface would be greater than the amount of carbon near the metallic release film-seed layer interface.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US Patent Application 2014/0338192 A1, published 20 Nov. 2014, hereinafter Chung) in view of Fukazawa et al. (EP 3817522 A1, published 05 May 2021, hereinafter Fukazawa) and further in view of Nitta (JP 2021/197484 A, published 27 Dec. 2021, hereinafter Nitta) and evidence provided by CNC Cookbook (“Complete guide to surface finish symbols, charts, Ra, Rz, measurements and callouts,” accessed 11 Sep. 2018, hereinafter CNC Cookbook).
Regarding claim 7, Chung in view of Fukazawa teaches the elements of claim 1.
Chung in view of Fukazawa does not disclose the surface roughness Sz of his release film.
Nitta teaches examples in which the surface roughness Ra of the release layer ranges from 20 to 400 nm (paragraph 0043 and Table 1, translation is provided below).
As evidenced by CNC Cookbook, a rough estimate for Rz of a surface is 7.2xRa (page 11).
Rz and Sz are related roughness parameters, with Rz being a value measured along a line on the surface, whereas Sz is a value measured over a 2D area on the surface. It is the examiner’s position that a release layer with surface roughness Ra value of 20 to 400 nm would have a maximum height roughness value that overlaps with the claimed maximum height roughness value of 0.001 to 20 µm (1 to 20,000 nm).
PNG
media_image1.png
486
1064
media_image1.png
Greyscale
Given that Chung and Nitta are drawn to multi-layer printed circuit boards, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a release layer with the surface roughness taught by Nitta as the release layer in the printed circuit board taught by Chung in view of Fukazawa. Since Chung and Nitta are both drawn to multi-layer printed circuit boards, one of ordinary skill in the art would have a reasonable expectation of success in using a release layer with the surface roughness taught by Nitta in the printed circuit board taught by Chung in view of Fukazawa. Further, Nitta teaches that release layers with a surface roughness Ra of 10 to 400 nm resulted in release layers with good release layer removal characteristics and low rates of solder cracking (paragraph 0043 and Table 1).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a roughness value Sz from the overlapping portion of the related range for Ra taught by Nitta because overlapping ranges have been held to be prima facie obviousness.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US Patent Application 2014/0338192 A1, published 20 Nov. 2014, hereinafter Chung) in view of Fukazawa et al. (EP 3817522 A1, published 05 May 2021, hereinafter Fukazawa) and further in view of Freydl and Leitgeb (US Patent Application 2014/0008012 A1, published 09 Jan. 2014, hereinafter Freydl).
Regarding claim 11, Chung in view of Fukazawa teaches the elements of claim 10, and Chung teaches that his heat conductive base layer (support D) is a resin-coated steel plate (paragraph 0038).
Chung in view of Fukazawa does not disclose a cured thermoset support layer.
Freydl teaches a circuit board with either a steel or a fiber-reinforced duroplast (thermoset) carrier (support layer) (paragraph 0061).
Given that Chung and Freydl are drawn to circuit boards and given that Freydl discloses the equivalence and interchangeability of using a steel carrier or a fiber-reinforced duraplast (thermoset) carrier as taught by Freydl, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a fiber-reinforced thermoset as the carrier/heat conductive base layer (support D) in the metal printed circuit board taught by Chung in view of Fukazawa. Since Chung and Freydl are both drawn to circuit boards, one of ordinary skill in the art would have a reasonable expectation of success in using a fiber-reinforced thermoset as the carrier/heat conductive base layer (support D) in the metal printed circuit board taught by Chung in view of Fukazawa, since Freydl teaches that fiber-reinforced thermosets are functionally equivalent to the steel taught by Chung as a material for the carrier/heat conductive base layer (support D). Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art that fiber-reinforced thermoset and the steel taught by Freydl can be substituted one for the other in the metal printed circuit board taught by Chung in view of Fukazawa.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Chang, Fukazawa, Nitta, nor Freydl teaches or discloses the claimed distribution of carbon across the seed layer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Beppu et al. (US Patent Application 2010/0255240 A1, published 07 Oct. 2010) teaches a release sheet with the claimed surface roughness. Hashizume et al. (US Patent Application 2018/0124925 A1, published 03 May 2018) teaches a printed circuit board formed using a seed layer containing a dispersant. Hermes and Ivanovici (US Patent Application 2011/0201190 A1, published 18 Aug. 2011) teaches a circuit board formed using a seed layer with a dispersant. Kim et al. (US Patent Application 2010/0140100 A1, published 10 Jun. 2010) teaches a printed circuit board with a release layer having a roughened surface. Murakawa et al. (US Patent Application 2018/0206368 A1, published 19 Jul. 2018) teaches an electric circuit in which the seed layer contains a nitrogen-containing group and the primer layer has a compound with a functional group [X]. Oka et al. (US Patent Application 2016/0330850 A1, published 10 Nov. 2016) teaches a conductive layer composed of a conductive ink comprising a dispersant.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787
Prosecution Insights