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 .
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.
Claims 1-8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1: The term “extensively” in line 3 is a relative term which renders the claim indefinite because one is not reasonably apprised of how much bonding is required to be considered extensively bonded. The term “extensively” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 recites the limitations “partially solid material” and “partially non-solid material” in lines 5-6. It is not clear from the claim language if the limitation refers to a material that is partially solid (i.e. a semi-solid or gel), and partially non-solid (i.e. also partially solid), or the structuring region is partially made up of solid material and partially made up of non-solid material. In the interest of advancing prosecution, the disputed limitation will be considered the latter (i.e. wherein the structuring region is made of both a solid material and a non-solid material) as supported in the instant specification at p. 9, l. 25-30, which states “The recess contains non-solid material. The structuring region partially comprises the metal layer and the recess. Therefore, the structuring region comprises partially solid material, which is formed by the metal of the metal layer, and non-solid material with which the recess is filled.”
Further regarding claim 1: The antecedent basis for the following limitations are unclear:
“the total area” in line 14 lacks antecedent basis because a total area has not been introduced previously in the claim
“the points B, C, and D” in line 14 lacks antecedent basis because these points have not been introduced previously in the claim
“the area” of “the triangle” in line 15 lack antecedent basis because an area of a triangle has not been introduced previously in the claim
“which area” in line 15 is not clear in meaning. It is suggested to more clearly describe or reference the area, such as “…described by the points B, C, and D that is occupied by the solid material”
“solid material” in line 16 should be “the solid material” if this material is the same solid material as recited in line 5
“the best-fit line” in line 18 lacks antecedent basis because a best fit line has not been introduced previously in the claim
“the contour line” in line 20 lacks antecedent basis because a contour line has not been introduced previously in the claim
More than one perpendicular is specified in lines 22-31. For clarity of antecedent basis and clarity of which perpendicular is being referenced, it is suggested to distinguish these perpendiculars and to clarify what is meant by the limitations “at a distance”. For example, “on a first line perpendicular to the best-fit line, located at a first position where the contour line is at a distance of 150 µm from the best-fit line, point A is determined to be where the first line perpendicular to the best-fit line intersects the contour line”. Similarly, “on a second line perpendicular to the best-fit line, located at a second position where the contour line is at a distance of 80 µm from the best-fit line, point B is determined to be where the second line perpendicular to the best-fit line intersects the contour line”. And “on the second line perpendicular to the best-fit line, which passes through point B, point D is determined to be where the second line intersects the best-fit line” (this suggested wording will also clarify the antecedent basis for “a perpendicular” recited in line 30).
Regarding claim 2, line 2: “the ceramic” lacks antecedent basis because “a ceramic” has not been introduced previously in the claim.
Regarding claim 4, line 2: “the solid material” lacks antecedent basis because claim 1 introduces a “partially solid material”. This point may be moot depending on how the applicant resolves the indefiniteness outline above regarding the limitation of partially solid material.
Regarding claim 5, line 2: “the non-solid material” lacks antecedent basis because claim 1 introduces a “partially non-solid material”. This point may be moot depending on how the applicant resolves the indefiniteness outline above regarding the limitation of partially non-solid material.
Regarding claim 7, line 2: “the sample standard deviation SSD” lacks antecedent basis because “a sample standard deviation SSD” has not been introduced previously in the claim.
Regarding claim 8, line 1: “a metal-ceramic substrate” should be “the metal-ceramic substrate” because this feature is introduced previously (in claim 1).
Claims 3 and 6 are rejected because they are dependent on a rejected claim.
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.
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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yuasa et al. (US 2020/0163210) in view of Fuhrmann et al. (2014 NPL attached).
Claim 1: Yuasa teaches a ceramic circuit substrate having a circuit pattern provided on a ceramic substrate with a brazing material layer interposed therebetween (para. 0015). A ceramic substrate having a circuit pattern is considered to have a main extension plane since it has a surface for brazing, which is also evident in Fig. 1. The circuit pattern is formed from a copper plate (i.e. a metal layer), which is bonded on the ceramic substrate using the braze material and etched (para. 0044) (i.e. a metal-ceramic substrate). Being etched is considered where the metal layer has a structuring region. Fig. 1, which is a cross-sectional photograph, shows this region to have a substantially smooth slope, although one of ordinary skill in the art would expect some degree of surface roughness, or deviation from a perfectly straight line, on a smaller scale than is evident. Therefore, the structuring region is considered to have the instantly claimed partially solid material (i.e. the metal of the circuit pattern), partially non-solid material (i.e. air where surface roughness leads to a recess), geometry, and ratio of areas. Yuasa teaches that it is preferable to perform Ni plating, Ni alloy plating, Au plating, or an anti-corrosion treatment in order to improve the weatherability of the copper plate constituting the circuit pattern and to prevent changes over time (para. 0050). However, Yuasa does not teach a silver-comprising contact region arranged on the metal layer.
Reasonably pertinent to the problem of protecting copper from corrosion, Fuhrmann teaches copper conductor materials oxidize in normal air, and the oxides are electrically insulating (Introduction). Fuhrmann teaches that the contact areas are therefore often coated such as with tin, silver, or nickel (Introduction).
As Yuasa and Fuhrmann both teach coating/plating copper conductor/circuit materials, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the ceramic circuit substrate of Yuasa to include where the contact areas of the copper circuit are coated with silver (i.e. having a silver-comprising contact region arranged on the metal layer) because silver is a conventionally known alternative to nickel for protecting copper materials from oxidizing in air, and one would have had a reasonable expectation of success.
Claim 2: Yuasa teaches the ceramic substrate may be a nitride ceramic such as silicon nitride or aluminum nitride, an oxide ceramic such as aluminum oxide, etc. (para. 0031).
Claim 3: Yuasa teaches the circuit pattern may be formed from a copper plate (i.e. the metal layer comprises copper (para. 0044).
Claims 4-5: The circuit pattern is formed from a copper plate (i.e. a metal layer), which is bonded on the ceramic substrate using the braze material and etched (para. 0044). Being etched is considered where the metal layer has a structuring region. Fig. 1, which is a cross-sectional photograph, shows this region to have a substantially smooth slope, although one of ordinary skill in the art would expect some degree of surface roughness, or deviation from a perfectly straight line, on a smaller scale than is evident. Therefore, the structuring region is considered to have the instantly claimed partially solid material (i.e. the solid material contains metal of the metal layer) and partially non-solid material (i.e. air where surface roughness leads to a recess; i.e. the non-solid material contains gaseous material).
Claim 6: Fig. 1, which is a cross-sectional photograph, shows this region to have a substantially smooth slope, although one of ordinary skill in the art would expect some degree of surface roughness, or deviation from a perfectly straight line, on a smaller scale than is evident. From the image, it would be apparent that the ratio of solid material overlaps the instantly claimed ratio. See MPEP § 2144.05.
Claim 7: Yuasa does not specify the sample standard deviation of the ratio of solid compared to the total. However, since the structuring regions are formed by etching, one would not expect a large standard deviation because etching is a relatively uniform process as evidenced by Fig. 1 (i.e. a relatively smooth surface is obtained).
Claim 8: Yuasa teaches ceramic circuit substrates being used for power modules in electric vehicles (i.e. an electronic component) (para. 0011).
Double Patenting
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-8 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-7 and 9 of copending Application No. 19/032,344 (reference application).
It is noted that the following terminology recited in the claims are not identical but do not amount to a patentably distinguishable structure:
A “main boundary surface” in the ‘344 application corresponds to being along the instantly claimed “main extension plane” (i.e. in the plane or runs parallel to it as outlined on p. 4 of the instant specification), and therefore the ceramic body comprises a main extension plane
The “metal layer is bonded over a surface to the ceramic body” as recited in the ‘344 application is considered to be a “metal layer which is extensively bonded to the ceramic body” as recited in the instant claim
A “solid material in regions” and “non-solid material in regions” correspond to the instantly claimed “partially solid material” and “partially non-solid material”, respectively
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9 of copending Application No. 19/032,318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘318 application both recite a metal-ceramic substrate comprising a ceramic body, a metal layer with a structuring region comprising partially solid material and partially non-solid material, and a contact region comprising silver arranged on the metal layer.
Instant claim 1 recites the ceramic body comprises a main extension plane, whereas claim 1 of the ‘318 application recites a primary boundary phase. However, A “main boundary surface” in the ‘318 application corresponds to being along the instantly claimed “main extension plane” (i.e. in the plane or runs parallel to it as outlined on p. 4 of the instant specification), and therefore the ceramic body comprises a main extension plane.
Instant claim 1 recites the metal layer is extensively bonded to the ceramic body, whereas claim 1 of the ‘318 application recites the metal layer is connected over its surface to the ceramic body. These features are not patentably distinguishable because being bonded and being connected are substantially identical and “over its surface” is considered to be extensively.
Instant claim 1 and claim 1 of the ‘318 application recite a geometry of the structuring region. However, these ranges overlap due to being open ended (i.e. >60%, which includes up to 100%, of a line that intersects solid material as recited in the ‘318 application, compared to solid material being >70%, which includes up to 100%, of a triangle that includes the same line between points B and C). The courts have held that ranges that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claims 2-4 and claims 2-4 of the ‘318 application recite substantially identical limitations.
Instant claim 5 and claim 5 of the ‘318 application recite substantially identical limitations with “gas-phase material” and “gaseous material” being substantially identical.
Instant claims 6 and 7 overlap with claims 6 and 7 of the ‘318 application for the same reasons as outlined above regarding claim 1.
Instant claim 8 and claim 9 of the ‘318 application recite substantially identical limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9 of copending Application No. 18/998,551 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘551 application both recite a metal-ceramic substrate comprising a ceramic body having a main extension plane, a metal layer with a structuring region comprising partially solid material and non-solid material in regions (i.e. partially non-solid material), and a contact region comprising silver arranged on the metal layer.
Instant claim 1 recites the metal layer is extensively bonded to the ceramic body, whereas claim 1 of the ‘551 application recites the metal layer is connected to the ceramic body in a planar manner. These features are not patentably distinguishable because being bonded and being connected are substantially identical and “in a planar manner” is considered to be extensively.
Instant claim 1 and claim 1 of the ‘551 application recite a geometry of the structuring region. However, these ranges overlap due to being open ended (i.e. >60%, which includes up to 100%, of a line that intersects solid material as recited in the ‘318 application, compared to solid material being >70%, which includes up to 100%, of a triangle that includes the same line between points B and C). The courts have held that ranges that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to other ranges. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Instant claim 2 and claim 2 of the ‘551 application recite substantially identical limitations.
Instant claim 3 and claim 10 of the ‘551 application recite substantially identical limitations.
Instant claim 4 and claim 12 of the ‘551 application recite substantially identical limitations.
Instant claim 5 and claim 13 of the ‘551 application recite substantially identical limitations.
Instant claims 6 and 7 overlap with claims 14 and 15 of the ‘551 application for the same reasons as outlined above regarding claim 1.
Instant claim 8 and claim 16 of the ‘551 application recite substantially identical limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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, Humera Sheikh can be reached at 571-272-0604. 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.
/KIM S. HORGER/Examiner, Art Unit 1784
