Office Action 4: Notice of Allowance (2025-03-05)

CLAIMS:
Listing of Claims:
 Amendments to the Claims:

This listing of claims will replace all prior versions, and listings, of claims in the application:

1\. (Currently Amended) A method, comprising:
heating a material including silver particles within an ultra-violet (UV) curable resin to obtain the UV curable resin on sintered silver particles without curing the UV curable resin,wherein the silver particles are un-sintered prior to the heating,
wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating, and
wherein at least a portion of the material is positioned between a chip and a submount; and
irradiating, with UV light, the UV curable resin to cure the UV curable resin and obtain a polymer on the sintered silver particles.
2\. (Currently Amended) The method of claim 1, wherein heating the material comprises sintering the silver particles within the UV curable resin
.

3\. (Original) The method of claim 1, wherein irradiating the UV curable resin comprises at least one of irradiating the UV curable resin for a continuous exposure period or irradiating the UV curable resin with pulses of the UV light.
4\. (Original) The method of claim 1, further comprising:
applying the material to at least one of the submount or the chip; and
positioning the chip on the submount.
5\. (Original) The method of claim 1, further comprising:
before irradiating the UV curable resin, cooling the UV curable resin on the sintered silver particles.
6\. (Original) The method of claim 1, wherein the sintered silver particles are sintered within the UV curable resin.
7\. (Canceled)
8\. (Currently Amended) The method of claim 1, wherein a portion of the polymer forms a layer on \[\[an\]\]the lateral exterior surface of the sintered silver particles.
9\. (Original) The method of claim 8, wherein the layer is between 0.1 and 10 microns thick.
 The method of claim 8, wherein the layer is connected to a portion of one or more side surfaces of the chip and a top surface of the submount.

11\. (Currently Amended) A method, comprising:
placing a material between a chip and a submount,the material including un-sintered silver particles and an ultra-violet (UV) curable resin;
heating the material to sinter the un-sintered silver particles within the UV curable resin to produce sintered silver particles without curing the UV curable resin,wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating; and
irradiating, with UV light, the UV curable resin to cure the UV curable resin and produce a polymer on the sintered silver particles.

12\. (Original) The method of claim 11, wherein irradiating the UV curable resin comprises at least one of irradiating the UV curable resin for a continuous exposure period or irradiating the UV curable resin with pulses of the UV light.

13\. (Original) The method of claim 11, further comprising:
before irradiating the UV curable resin, cooling the UV curable resin on the sintered silver particles.
 The method of claim 11, wherein the sintered silver particles have a density of 10.49 grams/centimeter3, and
wherein the UV curable resin has a density of 1.00 grams/centimeter3.

15\. (Original) The method of claim 11, wherein the sintered silver particles are formed from at least one of microparticles or nanoparticles.

16\. (Original) The method of claim 11, wherein the UV curable resin comprises at least one of an epoxy-based resin, an acrylate-based resin, or a silicone-based resin.

17\. (Previously Presented) The method of claim 11, wherein a ratio, by weight, of the UV curable resin to silver particles is between 0.05 and 1, and
the ratio is selected such that, when cured, a layer of the polymer on the sintered silver particles has a thickness in a range from 0.1 microns to 10 microns.

18\. (Currently Amended) The method of claim 11, wherein sintering the un-sintered silver particles within the UV curable resin further pushes the UV curable resin toward \[\[an\]\] the lateral exterior surface of the material to produce a layer of the UV curable resin on the sintered silver particles.

19\. (Original) The method of claim 18, wherein the layer is between 0.1 and 10 microns thick.


20\. (Original) The method of claim 18, wherein the layer is connected to a portion of one or more side surfaces of the chip and a top surface of the submount.

21\. (Currently Amended) A method, comprising:
heating a material including silver particles within an ultra-violet (UV) curable resin to obtain the UV curable resin on sintered silver particles without curing the UV curable resin,wherein at least a portion of the material is positioned between a chip and a submount,
wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating to produce a layer of the UV curable resin on the sintered silver particles;
cooling the UV curable resin on the sintered silver particles; and
irradiating, with UV light and after the cooling, the UV curable resin to cure the UV curable resin and obtain a polymer on the sintered silver particles.

OFFICE ACTION:
DETAILED ACTION
Notice of Pre-AIA  or AIA  Status
1.	The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Allowable Subject Matter
2.           Claims 1-6, 8-21, are allowed.
Reasons for Allowance
3.          The following is an examiner's statement of reasons for allowance:
4.           Regarding claims 1-6, 8-10, the prior art failed to disclose or reasonably wherein the silver particles are un-sintered prior to the heating, wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating, and wherein at least a portion of the material is positioned between a chip and a sub-mount; and irradiating, with UV light, the UV curable resin to cure the UV curable resin and obtain a polymer on the sintered silver particles.
5.           Regarding claims 11-20, the prior art failed to disclose or reasonably heating the material to sinter the un-sintered silver particles within the UV curable resin to produce sintered silver particles without curing the UV curable resin, wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating; and irradiating, with UV light, the UV curable resin to cure the UV curable resin and produce a polymer on the sintered silver particles..
6.           Regarding claim 21, the prior art failed to disclose or reasonably wherein at least a portion of the material is positioned between a chip and a sub-mount, wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating to produce a layer of the UV curable resin on the sintered silver particles; cooling the UV curable resin on the sintered silver particles; and irradiating, with UV light and after the cooling, the UV curable resin to cure the UV curable resin and obtain a polymer on the sintered silver particles.
Remarks:
7.    The closest prior art is Yamasaki et al., US 11,257,735 B2. However, the prior art failed to disclose or reasonably wherein at least a portion of the material is positioned between a chip and a sub-mount, wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating to produce a layer of the UV curable resin on the sintered silver particles; cooling the UV curable resin on the sintered silver particles; and irradiating, with UV light and after the cooling, the UV curable resin to cure the UV curable resin and obtain a polymer on the sintered silver particles, as in the claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee.  Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion

APPLICANT REBUTTAL: PATENT
REMARKS
Applicant addresses below the issues raised by the Office Action.
Statement Re
g
ardin
g
Substance o
f
I
nterview
Applicant submits that an interview occurred on January 29, 2025 with Applicant's
representative, Matthew Allen, and Examiner Jean Baptiste. Applicant appreciates the courtesies extended during the interview. During the interview, Applicant's representative discussed the claims, the rejections, the applied references, and proposed claim amendments. The Examiner agreed that the 112 rejections would be withdrawn and that proposed amendments, substantially included in this response, would lead to further search and consideration. The Examiner is also invited to call Applicant's representative to resolve any remaining issues if the Examiner believes the application is not in condition for allowance.
Initial Matter - Unaddressed A
rg
uments
Applicant respectfully requests that, should an Allowance not be forthcoming, any subsequent action should address Applicant's arguments which were made in Applicant's Response filed September 20, 2024, consideration of which was requested in Applicant's Request for Continued Examination filed October 22, 2024. For convenience, the remarks presented herein also include those made in Applicant's prior Response.
Rej
ection under 35 U
.S.
C.
$
112(a)
Claims 1-6 and 8-21 stand rejected under 35 U.S.C. § 112(a).
PATENT
As discussed during the Interview, support for the "silver particles within an ultra-violet
(UV) curable resin" and "heating the material...without curing the UV curable resin" may be found throughout Applicant's specification, including at paragraphs 0015, 0025, and 0035, as well as Fig. 1. Thus, claims 1-6 and 8-21 satisfy the written description requirement of 35 U.S.C. § 112(a).
Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw the rejection of claims 1-6 and 8-21 under 35 U.S.C. § 112(a).
Re
jection under 35 U
.S.
C.
$
112(b)
Claims 1-6 and 8-21 stand rejected under 35 U.S.C. § 112(b).
As discussed during the Interview, one of ordinary skill in the art would understand that "silver particles within an ultra-violet (UV) curable resin" means that the particles are physically located within the resin, while "heating the material...without curing the UV curable resin" means that heating the material does not cure the UV curable resin. Thus, claims 1-6 and 8-21 are definite under 35 U.S.C. § 112(b).
Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw the rejection of claims 1-6 and 8-21 under 35 U.S.C. § 112(b).
Rej
ection under 35 U
.
S.C.
$
103 based on KA
JI
WARA, BR
ODD, and GREGORY
Claims 1-6 and 8-21 stand rejected under 35 U.S.C. § 103 as allegedly being
unpatentable over KAJIWARA (U.S. Patent Application Publication No. 2011/0290863), BRODD (U.S. Patent Application Publication No. 2017/0267899), and GREGORY (U.S. Patent No. 6,245,827). Applicant respectfully traverses the rejection.
PATENT
Applicant respectfully submits the Office Action fails to set forth a proper rational for combining KAJIWARA with BRODD or GREGORY that would support a conclusion of obviousness.
MPEP § 2143.01 states that references may be combined "when there is some teaching, suggestion, or motivation to do so," and that "the proposed modification cannot change the principle of operation of a reference." Pages 3-4 of the Office Action alleges that "combining Kajiwara's process with Brodd's invention would have been beneficial because it gives the practitioner flexibility in using available ultra-violet (UV) technologies," and suggests modifying KAJIWARA to include the "photocurable resin" of BRODD or GREGORY.
Applicant respectfully asserts that, even assuming a person of ordinary skill in the art would or could replace the "organic solvent" of KAJIWARA with the "photocurable resin" of BRODD or GREGORY, which Applicant does not concede, this would clearly require substantial experimentation and redesign. Furthermore, the proposed combination would also change the principle of operation of KAJIWARA (e.g., where "the sintering Ag paste is heated to 4000 C... and makes metal Ag precipitate from the solution of the organic silver complex in the sintering Ag paste and sediment on a plated Ni face to form a metallizing Ag film 7 on the face" (KAJIWARA, para. 0059)) to a principle of operation without a metallizing Ag film, as changing the solution of the Ag paste to a photocurable resin is not taught to form a metallizing Ag film after heating. In other words, it is a significantly different principle of operation to go from using a solution that, when heated, has "volatized and dissipated" to form an Ag film, to a resin that is not taught to volatize and dissipate from a heating process that sinters silver, nor is there any indication that switching to the photocurable resin would result in formation of an Ag film after heating. This modification of KAJIWARA is impermissible, at least because the
PATENT
"suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate" (MPEP § 2143.01(VI) quoting In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959)).
For at least the foregoing reasons, Applicant respectfully asserts that the Office Action fails to establish prima facie obviousness for failure to provide sufficient suggestion or motivation for the proposed combination of KAJIWARA and BRODD.
In addition, for at least the reasons presented in the interview and without acquiescing in the Examiner's rejection, the cited sections of the applied references, whether taken alone or in any reasonable combination, do not disclose at least "wherein, based at least in part on the heating, at least a portion of the UV curable resin is pushed toward a lateral exterior surface of the material during the heating," as recited in claim 1, as amended.
Furthermore, for at least the reasons presented in the interview and without acquiescing in the Examiner's rejection, the cited sections of the applied references, whether taken alone or in any reasonable combination, do not disclose at least "heating a material including silver particles within an ultra-violet (UV) curable resin to obtain the UV curable resin on sintered silver particles without curing the UV curable resin," as recited in claim 1, as amended. For example, KAJIWARA, BRODD and GREGORY are silent regarding heating a material that includes un-cured UV curable resin and un-sintered silver particles to sinter the silver particles.
In particular, Fig. 2 and 0059 of KAJIWARA disclose the following:
PATENT
(1) Supply sintering Ag paste to space between members to be bonded.
(2) Bake organic silver complex to metallize face of nonprecious metal with Ag.
[0059] In FIG. 2(2), the sintering Ag paste is heated to 4000 C. in a non- oxidizing atmosphere, and makes metal Ag precipitate from the solution of the
organic silver complex in the sintering Ag paste and sediment on a plated Ni face to form a metallizing Ag film 7 on the face. At this time, the organic solvent and the organic component which has been the organic silver complex and has been
separated from Ag are volatilized and dissipated.
The Office Action concedes that KAJIWARA does not disclose heating a UV curable resin to obtain the UV curable resin on sintered silver particles (Office Action, page 3), and the cited portions clearly indicate that the cited heating step is "to form a metallizing Ag film 7" and that "the organic solvent ... has been separated from Ag are volatized and dissipated." Thus, there is clearly no un-cured "UV curable resin on sintered silver particles," as recited in claim 1.
With respect to BRODD and GREGORY, the Office Action relies on BRODD and
GREGORY to allegedly disclose UV curable resin; however, cited paragraph 0015 of BRODD and corresponding Fig. 1 are reproduced below:
PATENT
FIG. 1
[0015] The electrically conductive network 20 is embedded in cured resin
layer (polymer matrix) 30 except for the surface of the conductive network attached to the sacrificial substrate, which will later be exposed and can be
generally coplanar with the surface of the cured resin layer. The cured resin layer
can be formed from a curable (e.g. polymerizable) resin capable of being coated
onto the conductive network and supporting substrate, followed by curing to form
the cured resin layer. Desirable properties of the cured resin layer include the
ability to form a self-supporting (e.g., free-standing) film, flexibility,
conformability, stretchability (i.e. the film is elastomeric), adhesion to the
conductive network and PSA layer, transparency, and a non-tacky surface after
curing. Preferred polymerizable resins are photocurable resins, e.g. resins having
photoinitiators and curable using visible or UV wavelengths. Acrylic and
methacrylic (collectively "(meth)acrylic") resins or combinations thereof, can be used to form the cured resin layer, an example of which is Unidic V 9510 acrylic resin (DIC Corp., Parsippany, N.J.). The thickness of the cured resin layer can be
less than 30 pm, less than 20 pm, or less than 10 pm.
The cited portions of GREGORY further provide:
(c) Rapid, deep and complete cure throughout the entire volume of the
resin composition upon application of ultraviolet light and without the necessity
of on-site heating.
The present invention is a resin composition which possesses an enhanced
shadow cure chemistry mechanism, i.e., the composition cures by exposure to
ultraviolet radiation throughout its entire volume without the need for any other
outside stimuli.
PATENT
Even assuming BRODD and/or GREGORY disclose a UV curable resin, which
Applicant does not concede, the mere recitation of "photocurable resins, e.g., resins having photo-initiators and curable using visible or UV wavelengths" or "a resin composition which ... cures by exposure to ultraviolet radiation... without the need for any other outside stimuli" alone or in combination with the cited portions of KAJIWARA, does not disclose or suggest "heating a material including silver particles within an ultra-violet (UV) curable resin to obtain the UV curable resin on sintered silver particles without curing the UV curable resin," as recited in claim
1. For example, KAJIWARA discloses a process, while the cited portions of BRODD and GREGORY disclose a material, and there is no teaching or suggestion that one of skill in the art would use the resin of BRODD or GREGORY in the process of KAJIWARA. Even if the resin disclosed by BRODD or GREGORY were used in the process of KAJIWARA, which Applicant does not concede, there is no teaching or suggestion regarding which how the resin would be used or in which part of the process. Thus, the proposed combination of KAJIWARE, BRODD, and GREGORY does not disclose or suggest "heating a material including silver particles within an ultra-violet (UV) curable resin to obtain the UV curable resin on sintered silver particles without curing the UV curable resin," as recited in claim 1.
Independent claims 11 and 21, as amended, recite similar features. Therefore,
independent claims 1, 11, and 21 and the claims that depend thereon, are patentable over the cited sections of the applied references, whether taken alone or in any reasonable combination.
Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw the rejection of claims 1-6 and 8-21 under 35 U.S.C. § 103 based on KAJIWARA, BRODD, and GREGORY.
PATENT
Conclusion


CITED REFERENCE SUMMARIES: Ref US11257735B2: Claims:
A power module substrate with a heat sink comprising: a power module substrate provided with an insulating substrate, a circuit layer provided on one surface of the insulating substrate, and a metal layer provided on the other surface of the insulating substrate; and a heat sink bonded via a bonding layer to a surface of the metal layer of the power module substrate on an opposite side to the insulating substrate, wherein the bonding layer is a sintered body of silver particles and a porous body having a relative density in a range of 60% or more and 80% or less and has a thickness in a range of 10 Î¼m or more and 500 Î¼m or less.
a power module substrate provided with an insulating substrate, a circuit layer provided on one surface of the insulating substrate, and a metal layer provided on the other surface of the insulating substrate; and a heat sink bonded via a bonding layer to a surface of the metal layer of the power module substrate on an opposite side to the insulating substrate, wherein the bonding layer is a sintered body of silver particles and a porous body having a relative density in a range of 60% or more and 80% or less and has a thickness in a range of 10 Î¼m or more and 500 Î¼m or less.
provided on one surface of the insulating substrate, and a metal layer provided on the other surface of the insulating substrate; and
a heat sink bonded via a bonding layer to a surface of the metal layer of the power module substrate on an opposite side to the insulating substrate,
wherein the bonding layer is a sintered body of silver particles and a porous body having a relative density in a range of 60% or more and 80% or less and has a thickness in a range of 10 Î¼m or more and 500 Î¼m or less.
The power module substrate with a heat sink according to claim 1 , wherein the metal layer is formed of an aluminum sheet formed of aluminum or an aluminum alloy, or a copper sheet formed of copper or a copper alloy.
wherein the metal layer is formed of an aluminum sheet formed of aluminum or an aluminum alloy, or a copper sheet formed of copper or a copper alloy.
The power module substrate with a heat sink according to claim 2 , wherein the metal layer is formed of the aluminum sheet, and a silver plating layer or a gold plating layer is provided on a surface of the aluminum sheet on an opposite side to the insulating substrate.
wherein the metal layer is formed of the aluminum sheet, and a silver plating layer or a gold plating layer is provided on a surface of the aluminum sheet on an opposite side to the insulating substrate.
A method for manufacturing the power module substrate with a heat sink according to claim 1 , the method comprising: a process of forming paste-bonding material composition layer of providing a layer of a paste-bonding material composition including silver particles having an average particle size in a range of 0.1 μm or more and 1 μm or less in an amount in a range of 70% by mass or more and 95% by mass or less on at least one surface of a surface of a metal layer of a power module substrate on an opposite side to an insulating substrate and a heat sink, the power module substrate being provided with the insulating substrate, a circuit layer provided on one surface of the insulating substrate, and the metal layer provided on the other surface of the insulating substrate; a laminating process of laminating the power module substrate and the heat sink via the layer of the paste-bonding material composition; and a heating process of heating the laminated power module substrate and the heat sink at a temperature of 150° C. or higher and 300° C. or lower without pressing in a laminating direction.
a process of forming paste-bonding material composition layer of providing a layer of a paste-bonding material composition including silver particles having an average particle size in a range of 0.1 Î¼m or more and 1 Î¼m or less in an amount in a range of 70% by mass or more and 95% by mass or less on at least one surface of a surface of a metal layer of a power module substrate on an opposite side to an insulating substrate and a heat sink, the power module substrate being provided with the insulating substrate, a circuit layer provided on one surface of the insulating substrate, and the metal layer provided on the other surface of the insulating substrate;
a laminating process of laminating the power module substrate and the heat sink via the layer of the paste-bonding material composition; and
a heating process of heating the laminated power module substrate and the heat sink at a temperature of 150° C. or higher and 300° C. or lower without pressing in a laminating direction.