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
The Response filed on July 6, 2025 (hereinafter “Response”) has been entered into the prosecution for the application. Currently, claims 17-24 and 27-38 are pending. Claims 1-16 and 25-26 have been cancelled. Claims 24 and 27-36 are withdrawn. Claims 17 and 27 have been amended. Claims 37 and 38 are new.
In view of the amendment to claim 17, the previous rejection of claim 19 under 35 U.S.C. 112(d) is withdrawn as moot. The rejection of claims 18 and 20-23 remains, for reasons discussed below.
In the Response, Applicant has included a statement to establish that, not later than the effective filing date of the claimed invention, both the present application and WO 2020/014035 to Marley et al. (“Marley”) were owned by or subject to an obligation to assign to Ferro Corporation. This statement is set forth in a separately labeled section on page 10 of the Response. The Response is signed by Applicant’s representative. As the statement of common ownership appears to satisfy the requirements of 37 CFR 1.104(c)(4)(i) and 37 CFR 1.33(b), Marley is excepted as prior art under 35 U.S.C. 102(b)(2)(C). Therefore, the rejection of claims 17-23 under 35 U.S.C. 103 in view of Marley is withdrawn.
All prior art grounds of rejection are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18 and 20-23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claim 18, in line 7, claims 0.05-0.5 wt% CuO. Independent claim 17, as amended, claims 0.1-1 wt% CuO in line 9. Thus, dependent claim 18 claims a weight percentage range for CuO that includes range (0.05 wt% to less than 0.1 wt%) that falls outside the claimed range in the base claim. Hence, claim 18 fails to further limit the subject matter of the claim upon which it depends.
Claims 20-23 are rejected by reason of their dependence from claim 18.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 17-23 and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 2018/0022650 to Symes (hereinafter “Symes”) in view of U.S. Pat. Pub. 2019/0092692 to Fukui et al. (hereinafter “Fukui”) and U.S. Pat. No. 4,735,925 to Kato et al. (hereinafter “Kato”).
Regarding claim 17, Symes discloses a composition that is lead-free and cadmium-free (¶ 0019), the composition comprising 80-99 wt% of a calcined host (¶ 0019; ¶ 0005, teaching that host is calcined) and additives comprising 0.5-3 wt % H3BO3 (¶ 0019, claim 20), 0 to 0.5 wt% CuO (¶ 0019, claim 20), and 0.1-1 wt% of an alkali fluoride (LiF) (¶ 0019, claim 20). The sum of the weight percentages of the calcined host and additives would inherently sum to 100 weight percent. One of ordinary skill in the art before the effective filing date, given the teachings of Symes, in the course of routine experimentation, would have found it obvious to select compositional weight percentages from within the ranges taught by Symes to produce a composition meeting the limitations of claim 17. Further, one of ordinary skill in the art would have found it obvious to select compositional weight percentages from within the ranges taught by Symes in such a way that the weight percent of the calcined host and the combined weight percentage of additives summed to 100 weight percent. The claimed ranges for the components of the composition of claim 17 overlap or lie squarely inside the recited ranges of Symes. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Symes does not disclose that the calcined host comprises 49-65 wt% MgO and 35-51 wt% SiO2, or that the additives include 3-7 wt% of at least one alkaline-earth fluoride.
Fukui, in the same field of endeavor, teaches a composition comprising a calcined host (i.e., a main component, ¶ 0067, which is calcined, ¶¶ 0058, 0067) comprising MgO and SiO2 (¶¶ 0021, 0067). Fukui teaches that the molar ratio of MgO to SiO2 is within a range of 1.9:1.1 to 2.1:0.9 (¶ 0021); expressed in molar percentage terms, this is equivalent to MgO being from 63 mol% and 70 mol% of the calcined host and SiO2 being from 30 mol% to 37 mol% of the calcined host (63:37 is equivalent to 1.9:1.1, and 70:30 is equivalent to 2.1:0.9). When exemplary molar percentages within those ranges are converted into weight percentages, Fukui teaches a calcined host with weight percentage ranges outlined in the Table below:
MgO
SiO2
MgO
SiO2
mol%
mol%
wt%
wt%
63
37
53
47
65
35
55
45
67
33
58
42
70
30
61
39
Thus, Fukui teaches a calcined host comprising 53-61 wt% MgO and 39-47 wt% SiO2.
One of ordinary skill in the art would have found it obvious to modify Symes by replacing the calcined host in Symes with a calcined host as taught by Fukui. One of ordinary skill in the art would be motivated to introduce or substitute a calcined host as taught by Fukui in order to take advantage of the low sintering temperature and excellent humidity resistance of the Fukui calcined host (see Fukui at ¶¶ 0006, 0076-0077; Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Symes with Fukui to produce a composition comprising a calcined host that includes proportions of MgO and SiO2 within the claimed weight percentage ranges.
Symes as modified by Fukui does not teach that the additives include 3-7 wt% of at least one alkaline-earth fluoride.
Kato, in the same field of endeavor, teaches a ceramic composition that includes 4 to 8 wt% of CaF2 or SrF2 (Col. 2, lines 38-39; claim 2), both of which are alkaline-earth fluorides.
One of ordinary skill in the art could readily modify Symes as modified by Fukui to include, as another additive, from 4 to 8 wt% of an alkaline-earth fluoride (such as CaF2 or SrF2) as taught by Kato. The range of 4 to 8 wt% of an alkaline-earth fluoride taught by Kato substantially overlaps the range of 3 to 7 wt% recited in claim 17. In a case where claimed ranges overlap or touch ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05). One of ordinary skill in the art would be motivated to include an alkaline-earth fluoride additive as taught by Kato in order to increase the mechanical strength of the composition while, at the same time, decreasing the firing temperature of the composition (Kato, Col. 2, lines 42-45). Thus, it would have been obvious to one of ordinary skill in the art to use Kato to modify Symes as modified by Fukui, thereby producing a composition reading on all of the limitations of claim 17.
Regarding claim 18, Symes as modified by Fukui and Kato teaches the composition of claim 17 and moreover teaches that the calcined host comprises 53-61 wt% MgO and 39-47 wt% SiO2 (see Fukui at ¶ 0021) and that the additives comprise 0.5-3 wt % H3BO3 (¶ 0019, claim 20), 0 to 0.5 wt% CuO (¶ 0019, claim 20), and 0.1-1 wt% of an alkali fluoride (LiF) (¶ 0019, claim 20), and 4 to 8 wt% of at least one alkaline-earth fluoride (Kato, Col. 2, lines 38-39; claim 2). Thus, for every component range recited in claim 18, Symes as modified by Fukui and Kato teaches a range that overlaps the claimed range. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 19, Symes as modified by Fukui and Kato teaches the composition of claim 17 and moreover teaches that the calcined host comprises 53-61 wt% MgO and 39-47 wt% SiO2 (see Fukui at ¶ 0021) and that the additives comprise 0.5-3 wt % H3BO3 (¶ 0019, claim 20), 0 to 0.5 wt% CuO (¶ 0019, claim 20), and 0.1-1 wt% of an alkali fluoride (LiF) (¶ 0019, claim 20), and 4 to 8 wt% of at least one alkaline-earth fluoride (Kato, Col. 2, lines 38-39; claim 2). Thus, for every component range recited in claim 19, Symes as modified by Fukui and Kato teaches a range that overlaps the claimed range. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 20, Symes as modified by Fukui and Kato teaches that the calcined host comprising 80-99 wt% of the composition (Symes, ¶ 0019, claim 20). The claimed range of 87-92 wt% in claim 20 falls inside of the range recited in Symes as modified by Fukui and Kato. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 21, Symes as modified by Fukui and Kato teaches that the calcined host comprising 80-99 wt% of the composition (Symes, ¶ 0019, claim 20). The claimed range of 88-91 wt% in claim 21 falls inside of the range recited in Symes as modified by Fukui and Kato. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Regarding claim 22, Symes as modified by Fukui and Kato teaches wherein the at least one alkali fluoride comprises lithium fluoride (LiF) (Symes, claim 20), and the at least one alkaline-earth fluoride comprises calcium fluoride (CaF2) (Kato, Col. 2, lines 38-39; claim 2).
Regarding claim 23, Symes as modified by Fukui and Kato teaches that the composition as a whole is lead-free and cadmium-free (Symes, ¶ 0019, claim 20). Symes as modified by Fukui and Kato teaches that it is preferable that the composition be free of zinc (see Fukui at ¶ 0038). Symes as modified by Fukui and Kato teaches embodiments in which the composition is free of manganese and titanium (see Fukui, p. 8, Table 1, columns 8 and 9). Symes as modified by Fukui and Kato is silent as to the presence in the ceramic composition of bismuth, arsenic, and mercury, reasonably leading one of ordinary skill in the art to conclude that those elements are not present in the composition. Thus, Symes in view of Fukui and Kato teaches wherein the composition is free of all of the following in any form: lead, cadmium, zinc, manganese, bismuth, titanium, arsenic, and mercury.
Regarding claim 37, Symes as modified by Fukui and Kato teaches wherein the calcined host comprises 53-61 wt% MgO (see above, pp. 5-6), a range which falls within the claimed range of claim 37.
Regarding claim 38, Symes as modified by Fukui and Kato teaches a method of forming an electronic component comprising (a1) applying the composition of claim 17 to a substrate, or (a2) applying a tape comprising any dielectric composition of claim 17 to a substrate, or (a3) compacting a plurality of particles of the composition of claim 17 to form a monolithic composite substrate; and (b) firing the substrate at a temperature sufficient to sinter the composition (see Symes ¶¶ 0032-0036).
Response to Arguments
Applicant’s arguments filed July 6, 2025 have been fully considered but they are not persuasive.
Most of Applicant’s arguments are directed toward showing that U.S. Pat. No. 4,214,910 to Baumgart (“Baumgart”) cannot reasonably be used to modify Symes to show the obviousness of the pending claims (see Applicant’s Remarks at pp. 12-14). Since the new ground of rejection under Section 103 does not rely upon Baumgart to overcome the deficiencies of Symes, these arguments directed toward Baumgart are moot.
Applicant states, on page 14 of the Remarks, that “Kato also does not overcome the deficiencies of Symes.” Applicant does not elaborate upon this point. Without additional argument or evidence, this unsupported statement regarding Kato is not persuasive.
Applicant’s remaining arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pat. Pub. 2006/0058170 to Kidani et al. (“Kidani”) teaches a low temperature sintering ceramic composition that can be sintered at a temperature equal to or less than 1000°C; the composition comprises MgO and SiO2 in sum total in the range of from 64.0 to 99.2% by mass, and MgO and SiO2 are contained in the molar ratio of from 2:1 to 2:3.5 (Abstract).
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731