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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/7/25 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 does not contain a transitional phrase, the examiner suggests “A solder-metal mesh composite material comprising: a solder layer formed of Sn-Cu-Ni-based lead free solder contains metal mesh…” Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite because it is unclear if the “wherein” clause refers back to the preamble, “A solder-metal mesh composite material”. For the purposes of this examination, this clause will be interpreted as it does.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Eytcheson (6,822,331 B2) in view of Nishimura et al. (US 2016/0368102 A1) and Taniguchi (JP 52-039555), of record.
Regarding claim 1, Eytcheson teaches:
A solder-metal mesh composite material [joint structure (12); figure 2], wherein
a solder layer formed of solder [solder (16); paragraph spanning columns 3 and 4] contains metal mesh [Cu mesh (14); paragraph spanning columns 3 and 4] having a higher thermal conductivity than the solder, and
a void occupancy in a cross-section in a thickness direction is 1 or less [figure 2 shows no voids, also see below].
Eytcheson does not teach:
the lead-free solder layer is formed of Sn-Cu-Ni-based lead-free solder; and
the Sn-Cu-Ni-based lead-free solder contains 0.1 to 2% by weight of Cu, 0.002 to 1% by weight of Ni, and Sn as a remainder or contains 0.1 to 2% by weight of Cu, 0.002 to 1% by weight of Ni, 0.001 to 1% by weight of Ge, and Sn as a remainder.
Concerning the Sn-Cu-Ni solder:
Eytcheson is open to using other solders; 4:7-9.
Nishimura teaches a lead-free solder alloy composition having Sn—Cu—Ni as a basic composition, including 76.0 to 99.5 mass % of Sn, 0.1 to 2.0 mass % of Cu, and 0.01 to 0.5 mass % of Ni, and further including 0.1 to 5.0 mass % of Bi, thereby enabling soldering with high reliability which maintains joining strength without decreasing the bonding strength of a soldered joint even when it is exposed to high temperature for a long time, as well as at the time of bonding; 0023.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace the solder of Eytcheson with that of Nishimura in order to enable soldering with high reliability which maintains joining strength without decreasing the bonding strength of a soldered joint even when it is exposed to high temperature for a long time, as well as at the time of bonding, or because it is lead free.
Concerning the void occupancy:
Eytcheson melts a solder preform placed on the mesh in order to form the joint structure; 4:42-57.
Taniguchi teaches embedding copper mesh in brazing material without voids, wherein a vacuum is used during reflow to remove voids; pages 1 and 2. The examiner acknowledges that while brazing and soldering are distinct processes the only difference between these two processes is the arbitrary separating point of 450°C.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform the Eytcheson process in a vacuum in order to prevent voids from forming as taught by Taniguchi. The claim would have been obvious because a particular technique, i.e. “using a vacuum to prevent voids from forming during reflow”, was recognized as part of the ordinary capabilities of one skilled in the art. Accordingly, the claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to an anticipated success, it is likely the product not of invention but of ordinary skill and common sense.” Thus, the claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success and/or predictable results.
Regarding claim 2, Eytcheson teaches:
wherein the metal mesh is copper mesh [Cu mesh (14)].
Regarding claim 10, this claim is not further limiting because,
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Claims 1, 2, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Touzelbaev et al. (US 8,034,662 B2) in view of Nishimura et al. (US 2016/0368102 A1), and Taniguchi (JP 52-039555), of record. Note this rejection is based on the composite material being a solder preform.
Regarding claim 1, Touzelbaev teaches:
A solder-metal mesh composite material [preform in figure 1], wherein
a solder layer formed of lead-free solder [thermal interface material (35) which may be solder materials such as indium, tin, tin-silver, or other; 3:67-4:21] contains metal mesh [support structure (40), which may be Cu mesh; 3:67-4:21] having high thermal conductivity [4:11-19].
Touzelbaev does not teach:
the lead-free solder layer is formed of Sn-Cu-Ni-based lead-free solder; and
the Sn-Cu-Ni-based lead-free solder contains 0.1 to 2% by weight of Cu, 0.002 to 1% by weight of Ni, and Sn as a remainder or contains 0.1 to 2% by weight of Cu, 0.002 to 1% by weight of Ni, 0.001 to 1% by weight of Ge, and Sn as a remainder; and
a void occupancy in a cross-section in a thickness direction is 1% or less.
Concerning the Sn-Cu-Ni solder:
Nishimura teaches a lead-free solder alloy composition having Sn—Cu—Ni as a basic composition, including 76.0 to 99.5 mass % of Sn, 0.1 to 2.0 mass % of Cu, and 0.01 to 0.5 mass % of Ni, and further including 0.1 to 5.0 mass % of Bi, thereby enabling soldering with high reliability which maintains joining strength without decreasing the bonding strength of a soldered joint even when it is exposed to high temperature for a long time, as well as at the time of bonding; 0023.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace the solder of Touzelbaev with that of Nishimura in order to enable soldering with high reliability which maintains joining strength without decreasing the bonding strength of a soldered joint even when it is exposed to high temperature for a long time, as well as at the time of bonding, or because it is lead free.
Concerning the void occupancy:
Taniguchi teaches a preform comprising copper mesh embedded brazing material having no voids, wherein melted brazing material is injected into the mesh while a vacuum is being applied in order to prevent voids; pages 1 and 2. The examiner acknowledges that while brazing and soldering are distinct processes the only difference between these two processes is the arbitrary separating point of 450°C.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to manufacture the Touzelbaev preform using the Taniguchi process in order to obtain a void free preform. The claim would have been obvious because a particular technique, i.e. “using a vacuum to prevent voids from forming while embedding mesh into metal”, was recognized as part of the ordinary capabilities of one skilled in the art. Accordingly, the claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to an anticipated success, it is likely the product not of invention but of ordinary skill and common sense.” Thus, the claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success and/or predictable results.
Regarding claim 2, Touzelbaev teaches:
wherein the metal mesh is copper mesh [4:11-19].
Regarding claim 10, this claim is not further limiting because,
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference as 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; see PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 5712723458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARLOS J GAMINO/Examiner, Art Unit 1735
/ERIN B SAAD/Primary Examiner, Art Unit 1735