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 .
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed December 22, 2025, are acknowledged. Claim 1 is amended and Claim 14 is newly added. No new matter has been added.
Claim 7, 10 and 11 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, Group II, drawn to a method of forming a conductive film, and to a method of preparing a photosintered product (Claim 10) and to a photosintered product (Claim 11), and to there being no allowable generic or linking claim. Applicant timely elected without traverse in the reply filed on August 14, 2023.
Claims 1-2, 4-7 and 9-14 are pending, and Claims 1-2, 4-6, 9 and 12-14 are currently being considered in this office action.
Claim Interpretation
Regarding Claim 1 and Claim 13, Applicant directs support for the limitations (Claim 1) “wherein the cuprous oxide particle directly contacts the metal particle before the photosintering composition is cured” and (Claim 13) “wherein the cuprous oxide particle directly contacts the metal particle when the photosintering composition is dried but before the photosintering composition is cured by photoirradiation” to Fig. 1 and para. [0040]-[0041] and para. [0050], and therefore disclosure directed to the dried film formed from the photosintering composition. Subsequently, these limitations are specifically interpreted as limitations/features of the dried film formed by the photosintering composition (i.e., in the absence of the solvent).
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 (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.
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.
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 1-2, 4-6, 9 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hayata (previously cited and cited by Applicant in IDS filed May 27, 2021, US 20160024317 A) in view of Du (previously cited, “Photo-catalytic degradation of trifluralin by SnO2-doped Cu2O crystals”) and Wu (previously cited, “Characterization of Sn-doped CuO thin films prepared by a sol–gel method”).
Regarding Claim 1 and Claim 13, Hayata discloses a photosintering composition (Abstract; para. [0006]) comprising:
a cuprous oxide particle comprising an average particle size of 50-300nm, including 80-180 nm, which reads on the claimed average primary particle size of 1-270nm (para. para. [0026]-[0027]; copper (I) oxide is cuprous oxide);
copper particles (Abstract), which reads on a metal particle having a resistivity of 20C of 1.0x10-3 Ohm-cm or less (Abstract; copper comprises a volume resistivity at 20C of 1.7x10-4 Ohm-cm),
wherein the copper particle, and therefore the metal particle other than the cuprous oxide particle, has an average primary particle size of 100-1000nm (100nm-1um), which reads on the claimed range of 10nm-50um (para. [0029]); and
a solvent (Abstract),
wherein the photosintering composition sinters when the photosintering composition is irradiated with light of an accumulated pulsed light irradiation energy for sintering is 1-100 J/cm2, which reads on the claimed range of 0.01-100 J/cm2 (para. [0088]).
Regarding the average particle size of the metal particle, 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Further, regarding the limitations (Claim 1) “wherein the photosintering composition sinters when the photosintering composition is irradiated with light of an accumulated pulsed light irradiation energy for sintering is 0.01-100 J/cm2”, “wherein the cuprous oxide particle directly contacts the metal particle before the photosintering composition is cured”, and (Claim 13) “wherein the cuprous oxide particle directly contacts the metal particle when the photosintering composition is dried but before the photosintering composition is cured by photoirradiation” these limitations are directed to the post-processing of the photosintering composition and to features of the dried film (i.e., in the absence of the solvent, a component required by the claims in the photosintering composition), and are therefore limitations directed to an intended use of the photosintering composition.
The claims are directed to a photosintering composition, rather than the method of forming the film or using the photosintering composition. While intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim (MPEP § 2114).
In the instant case, Hayata discloses wherein the composition provides compactness between particles when formed into a film in order to provide sufficient electrical conductivity and to facilitate fusion between particles (see also para. [0020]-[0019]). One of ordinary skill in the art would appreciate that to provide compactness between particles to fuse and to provide electrical conductivity, the particles would need to be in contact with each other. Therefore, the composition of Hayata would be capable of performing the claimed function wherein (Claim 1) the cuprous oxide particle directly contacts the metal particle before the photosintering composition is cured by photoirradiation and (Claim 13) wherein the cuprous oxide particle directly contacts the metal particle when the photosintering composition is dried but before the photosintering composition is cured by photoirradiation (i.e., when formed into a film and dried).
Additionally, the claimed photosintering composition has also been met by Hayata (and Du and Wu – see details below and also Claim 5 and Claim 6 rejection), and therefore one of ordinary skill in the art would appreciate that the film of Hayata would behave the same as claimed when formed into a dried film and photosintered, and that the photosintering composition be capable of forming the claimed structure wherein the cuprous oxide particles directly contact the metal particles.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 4383 (CCPA 1977). See MPEP 2112.01.
Hayata does not disclose wherein the cuprous oxide particle comprises 570-10,000ppm of tin.
Du teaches wherein metal doping of cuprous oxide can tailor the band gap and improve the photoactivity range, wherein doping with Sn can also enhance catalytic activity (Abstract; Introduction).
Similarly, Wu teaches wherein copper oxide is doped with 0.5-2.0 mol% of Sn in order to enhance conductivity, and to reduce the band gap and resistivity (Introduction; Conclusions). Wu teaches wherein additions in this amount tailor particle size and band gap energy, wherein increasing amounts of tin produces smaller particle sizes and smaller band gap energies (Pg. 1721, Col. 1, Para. 2; Conclusions).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cuprous oxide particle of Hayata to comprise an additive element of Sn, as taught by Du and Wu, in an amount of 0.5-2.0 mol% Sn, as taught by Wu, for the invention disclosed by Hayata. One would be motivated to do this in order to improve conductivity of the composition, while reducing the band gap and resistivity, and to enhance the catalytic activity (see teachings above). Further, one would be motivated to use this amount in order to further tailor the band gap energies, and produce smaller particle sizes (see teaching above). One of ordinary skill in the art would appreciate that 0.5-2.0 mol% of Sn in cuprous oxide (Cu2-xSnxO) would be about 0.004-1.6wt% Sn, or about 40-16,000 ppm, which reads on the claimed range of 570-10,000ppm.
Additionally, the amount of Sn is a results effective variable with the results being the particle size and the band gap energy. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have included Sn in the cuprous oxide particles and in the amounts claimed, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.I.
Regarding the particle size of the cuprous oxide particles and the amount of Sn addition, 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 2, Hayata discloses wherein the metal particle is at least one metal particle selected from copper (Abstract).
Regarding Claim 4, Hayata further discloses a binder resin (para. [0051], thermoplastic resin reads on binder resin).
Regarding Claim 5, Hayata discloses wherein the composition comprises 45 parts copper oxide nanoparticles and 45 parts copper particles (90 parts of copper oxide and copper particles), 10 parts water and 20 parts ethanol (30 parts solvent), and 2 parts thermoplastic resin (binder), such that for a 130 parts of total composition, 23% is solvent and 69% is copper oxide and copper particles in total, which reads on the claimed range of 10-90wt% solvent and 10-90wt% cuprous oxide particles and metal particles in total (para. [0105], para. [0129], wherein thermoplastic binder is used in place of the thixotropic agent).
Regarding Claim 6, Hayata discloses wherein the composition comprises 45 parts copper oxide nanoparticles and 45 parts copper particles (90 parts of copper oxide and copper particles),10 parts water and 20 parts ethanol (30 parts solvent), and 2 parts thermoplastic resin (binder), such that for a 130 parts of total composition, 24.5% is solvent and binder in total, and 69% is copper oxide and copper particles in total, which reads on the claimed range of 10-90wt% solvent and binder resin in total, and 10-90wt% cuprous oxide particles and metal particles in total (para. [0105], para. [0129], wherein thermoplastic binder is used in place of the thixotropic agent).
Regarding Claim 9, Hayata, Du and Wu disclose an average primary particle size of the cuprous oxide particle of 30-270nm (Hayata, para. [0027], 10-500nm, preferably 50-300nm or further 80-180nm; see teachings above by Du and Wu in the rejection of Claim 1; Du, Pg. 671, Col. 2, Para. 1-2, wherein Sn-doping reduces particle CuO2 size to 93.4nm; Wu, Abstract; wherein Sn levels decrease CuO particle size from 84.1 to 61.8nm).
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 12, Hayata discloses wherein the binder resin is dissolved in the solvent (para. [0105]; para. [0129], wherein thermoplastic resin is used in place of thixotropic agent). One of ordinary skill in the art would appreciate the binder resin is dissolved in the solvent because the binder resin forms a solution from mixing (see para. [0105]).
Regarding Claim 14, Hayata discloses wherein the copper particles have an average primary particle size of 100-1000nm (100nm-1um), and does not disclose the presence of other metal particles, which reads on the claimed range of metal particles consisting of particles having an average primary particle size of 10nm-50um (para. [0029]; para. [0105], wherein film comprises metal particles consisting of copper primary particles with an average size of 360nm).
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Response to Arguments
Applicant’s arguments, filed December 22, 2025, with respect to Claim 1 and dependent claims thereof, rejected under 35 U.S.C. 103 over Kawahara in view of Du, Wu and Hayata, have been fully considered and are persuasive in view of the amendments further limiting the particle size of the metal particles. Therefore, the previous rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Hayata in view of Du and Wu, as detailed above.
Regarding Hayata:
Applicant argues that Hayata does not disclose wherein the cuprous oxide particle comprises 570-10,000ppm of tin.
This argument is not found persuasive.
This feature is taught by Du and Wu (see rejection above). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Hayata discloses the range 100-1000nm, and the smallest working example particle size is 360nm. Applicant argues that the newly recited claimed range of 10nm-50um is far below the sizes allowed by Hayata (10nm is less than 100nm).
Applicant therefore argues that a modification of particle size to Hayata would modify the principle operation of Hayata because Hayata teaches away from sizes below 100nm.
This argument is not found persuasive.
Hayata discloses wherein a particle size is within the claimed range (100-1000nm is within the claimed range of 10nm-50um), and no modification would be required of Hayata in order to meet the recited and claimed range.
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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Deng (previously cited, “Morphology transformation of Cu2O sub-microstructures by Sn doping for enhanced photocatalytic properties”): teaches wherein cuprous oxide powder may be doped with Sn in order to enhance photocatalytic properties and improve stability during a photocatalytic process (Abstract; Pg. 1127, Col. 2, Para. 1).
Mohebbi (previously cited, “Preparation and study of Sn-doped CuO nanoparticles as semiconductor”): teaches wherein CuO powder is doped with Sn in order to enhance conductivity, and to reduce the band gap and resistivity (Introduction; Conclusions).
Kaneshiro (previously cited and cited by applicant in IDS filed May 27, 2021, US 20140199204 A): teaches wherein inclusion of 10-5000 ppm of a dopant (Fe) to cuprous iron powder can produce smaller particle sizes and distribution ([0014]-[0015]; see Table 1).
Chiu (previously cited, US 20120107631 A): teaches wherein copper oxide comprises a dopant of tin with a molar ratio of the dopant to copper oxide being 0.1-99.9-0.5:99.5 in order to balance cost with reducing the bonding temperature of a thin film (para. [0008]; [0015]).
Kawahara (previously cited, US 597628 A): teaches a conductive composition comprising copper particles, 1-50nm cuprous oxide particles, solvent and optionally binder (Abstract; Col. 3, lines 48-58; Col. 7, lines 13-21).
Kim (previously cited, KR 101715756 B1, English Machine Translation provided): teaches a photosintering composition which sinters at 1-60J/cm2, comprising a copper oxide particle comprising a D50 of 900nm or less, pure copper particles and silver powder, a solvent and 3-10wt% binder (Abstract; [0092]; para. [0128]; para. [0071]), and wherein particles directly contact each other in the film (Fig. 13 and 14). Kim teaches wherein inclusion of copper powder and silver powder improves the density of a wiring pattern (film) compared to using nano-copper oxide particles alone because gas generated during the optical sintering process can be prevented (para. [0118]). Kim teaches including 5-15% silver powder and 10-65wt% pure copper particles in addition to the 30-85wt% nano-copper oxide particles (para. [0056]).
Kim further teaches wherein the copper oxide nanoparticles are core-shell particles with a copper oxide shell (para. [0048]), and does not disclose a cuprous oxide particle comprising 570-10,000ppm of Sn.
Ogawa (previously cited, US 20160155814 A): teaches a conductive composition comprising copper and copper oxide comprising a primary particle size less than 100nm, and up to 10% solvent (Abstract; para. [0060]).
Suita (previously cited, US 4521329 A): teaches wherein copper oxide particles, including Cu2O particles, give equivalent results to copper oxide present as a surface oxide layer on a copper powder (Col.5, lines 63-68).
Bae (previously cited, US 20180136181 A): teaches a layer comprising conductive filler particles in an amount of 0.01-100wt%, or more preferably 2-90wt%, wherein the conductive filler may include a metal powder and/or a metal oxide, in a matrix material comprises a polymer, and wherein the filler particles are in contact with each other and also uniformly distributed, forming a network structure in order to be electrically connected (Abstract, filler layer; para. [0062]-[0066]).
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 CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735