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www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`16/040,617
`
`07/20/2018
`
`Takatoshi IS HIKAWA
`
`PIPMM-5987l
`
`5620
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`“”2””
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`STEVENSONANDRE C
`
`2816
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/12/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`16/040,617
`Examiner
`ANDRE c STEVENSON
`
`Applicant(s)
`ISHIKAWA etal.
`Art Unit
`AIA (FITF) Status
`2816
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 09/10/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 07/20/19 is/are: a). accepted or b)D objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:I All
`
`b)D Some**
`
`c)D None of the:
`
`1.[:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191106b
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 2
`
`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.
`
`Response to Arguments
`
`Applicant’s arguments, with respect to the rejection(s) of claim(s) #1 under 102 (a)(2)
`
`with respect to the amendment being made to the existing claim language have been fully
`
`considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon
`
`further consideration, a new ground(s) of rejection is made in view of Sonobe et al.,
`
`2007/0023777 A1, and will be shown below.
`
`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 set forth in Graham v. John Deere C0., 383 US. l, 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.
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 3
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`Claims #1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Urushima
`
`(U.S. Pub. No. 2002/0132463) and further in view of Sonobe et al., (US. Pub. No.
`
`2007/0023777 A1), hereinafter referred to as “Sonnbe”.
`
`Urushima shows, with respect to claim #1, a method of manufacturing a semiconductor
`
`device, comprising: a step of preparing a semiconductor element including a functional surface
`
`(fig. #4b, item 12) on which a bump (fig. #4b, item 21) for external connection is formed
`
`(paragraph 0183) an adhesive layer (fig. #4c, item 22) of a film shape that covers the functional
`
`surface and the bump (fig. #4c, item 21), the adhesive layer including a flux (fig. #5B, item 28)
`
`component (paragraph 0204) and a step of positioning the semiconductor element in a state in
`
`which the bump (fig. #4D, item 21) and an electrode face (fig. 4A, item 24) each other above a
`
`board including the electrode to which the bump is bonded (paragraph 0192) a step of
`
`activating the flux component of a portion of the adhesive layer sandwiched between the bump
`
`and the electrode by pressing the adhesive layer against the electrode and applying ultrasonic
`
`vibration to the semiconductor element fourth step of pushing out the flux component from the
`
`portion of the adhesive layer by pressing the semiconductor element while applying the
`
`ultrasonic vibration to the board (paragraph 0186-0187), and bringing the bump into contact
`
`with the electrode and a step of bonding the bump to the electrode by continuing the application
`
`of the ultrasonic vibration and the pressing of the semiconductor element (paragraph 0191-
`
`0193).
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 4
`
`Urushima substantially shows the claimed invention as shown in the rejection above.
`
`Urushima fails to show, with respect to claim #1, a method step of activating the flux
`
`component of a portion of the adhesive layer sandwiched between the top surface of the bump
`
`and the electrode by pressing the adhesive layer against the electrode and applying ultrasonic
`
`vibration to the semiconductor element while the bump and the electrode are not in contact with
`
`each other; following the third step, a fourth step of pushing out the flux component from the
`
`portion of the adhesive layer by pressing the semiconductor element while applying the
`
`ultrasonic vibration to the board, and bringing the bump into contact with the electrode.
`
`Sonobe teaches, with respect to claim #1, a method wherein a light emitting element is in
`
`contact with a resin layer (fig. #6c, item 39; paragraph 0269) so that the positive and negative
`
`electrodes (fig. #6c, item 37; paragraph 0269) are mounted across from bump structures (fig.
`
`#6c, item 36; paragraph 0270) and applying ultrasonic waves while pressing the bump
`
`structures into the resin and eventually making contact with the electrodes (paragraph 0271).
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made, with respect to claim #1, a method step of activating the flux component of
`
`a portion of the adhesive layer sandwiched between the top surface of the bump and the electrode
`
`by pressing the adhesive layer against the electrode and applying ultrasonic vibration to the
`
`semiconductor element while the bump and the electrode are not in contact with each other;
`
`following the third step, a fourth step of pushing out the flux component from the portion of the
`
`adhesive layer by pressing the semiconductor element while applying the ultrasonic vibration to
`
`the board, and bringing the bump into contact with the electrode, into the method of Urushima,
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 5
`
`with the motivation that if this is done, the light emitting element will not be pushed back away
`
`from the support substrate by the resin and the strength of the joint between the conductive
`
`wiring and the electrodes of the light emitting element will be kept constant, thus, there will be
`
`no interruption of current flowing between the conductive wiring and the electrodes of the light
`
`emitting element, meaning that a light emitting device of higher reliability can be obtained, as
`
`taught by Sonobe.
`
`Urushima shows, with respect to claim #3, a method comprising bumps (fig. #5a, item
`
`21) are solder to plated pads (fig. #5a, item 29) on the surface of copper wiring (which acts as
`
`an electrode; fig. #5a, item 24) (paragraph 0206-0207).
`
`//
`
`Claim #2 are rejected under 35 U.S.C. 103 as being unpatentable over Urushima (U.S.
`
`Pub. No. 2002/0132463)" as modified by Sonobe et al., (US. Pub. No. 2007/0023777 A1),
`
`hereinafter referred to as “Sonnbe”, with respect to claim #1 and in view of Takamoto et al.,
`
`(US. Pub. No. 2016/0351432 Al), hereinafter referred to as “Takamoto”.
`
`Urushima as modified by Sonobe substantially shows the claimed invention as shown in
`
`the rejection above.
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 6
`
`Urushima as modified by Sonobe fails to show, with respect to claim #2, a method
`
`wherein the adhesive layer includes a main agent made of a resin, a thermoplastic agent, a curing
`
`agent for curing the resin of the main agent, a curing accelerator for accelerating curing of the
`
`resin of the main agent, an organic acid, and a filler.
`
`Takamoto shows, with respect to claim #2, a method wherein the adhesive layer includes
`
`a main agent (fig. #2c, item 2; paragraph 0037) made of a resin, a thermoplastic agent
`
`(paragraph 0038), a curing agent for curing the resin of the main agent (phenol resin;
`
`paragraph 0041), a curing accelerator for accelerating curing of the resin of the main agent,
`
`an organic acid (Imidazole; paragraph 0037, 0047), and a filler (silicone resin, paragraph
`
`0041) (fig. #5B, item 28).
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made, with respect to claim #2, a method wherein the adhesive layer includes a
`
`main agent made of a resin, a thermoplastic agent, a curing agent for curing the resin of the main
`
`agent, a curing accelerator for accelerating curing of the resin of the main agent, an organic acid,
`
`and a filler, into the method of Urushima as modified by Sonobe, with the motivation this lowers
`
`the necessary curing temperature, as taught by Takamoto.
`
`The rejections above rely on the references for all the teachings expressed in the text of
`
`the references and/or one of ordinary skill in the art would have reasonably understood or
`
`implied from the texts of the references. To emphasize certain aspects of the prior art, only
`
`specific portions of the texts have been pointed out. Each reference as a whole should be
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 7
`
`reviewed in responding to the rejection, since other sections of the same reference and/or various
`
`combinations of the cited references may be relied on in future rejections in view of
`
`amendments .
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR l.l36(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 extension fee pursuant to 37
`
`CFR l.l36(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 Andre’ Stevenson whose telephone number is (571) 272 1683.
`
`The examiner can normally be reached on Monday through Friday from 7:30 am to 4:30 pm. If
`
`attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Zandra
`
`Smith can be reached on 571—272 2429. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571—273—8300. Information regarding the status of an
`
`

`

`Application/Control Number: 16/040,617
`Art Unit: 2816
`
`Page 8
`
`application may be obtained from the Patent Application Information Retrieval (PAIR) system.
`
`Status information for published applications may be obtained from either Private PAIR or
`
`Public PAIR. Status information for unpublished applications is available through Private PAIR
`
`only. For more information about the PAIR system, see http://pair—direct.uspto.gov. Should you
`
`have questions on access to the Private PAIR system, contact the Electronic Business Center
`
`(EBC) at 866—217—9197 (toll—free). If you would like assistance from a USPTO Customer Service
`
`Representative or access to the automated information system, call 800—786—9199 (IN USA OR
`
`CANADA) or 57 1—272— 1000.
`
`/Andre’ Stevenson Sr./
`
`Art Unit 2816
`
`11/06/19
`
`/ZANDRA V SMITH/
`
`Supervisory Patent Examiner, Art Unit 2816
`
`

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