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 .
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 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.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2019/013231, as cited in the IDS dated 7/25/2023, wherein Kobori et al. (US 2021/0317342), as cited in the IDS dated 7/25/2023, hereinafter “Kobori,” is used as an English language equivalent, in view of Liang et al. (US 2009/0181165), hereinafter “Liang.”
Regarding claims 1 and 2, Kobori teaches an electro-conductive adhesive composition comprising silver particles having an average diameter of 0.8 µm (corresponding to silver particles B) and silver particles having an average diameter of 0.09 µm (90 nm, corresponding to silver particles A), which satisfies a relationship in which the average particle diameter of the silver particles B is 5 to 11 times the average particle diameter of the silver particles A (0.8 µm / 0.09 µm 8.89) (Abstract, [0081]-[0088]). Kobori further teaches wherein the mass ratio of the silver particles corresponding to silver particles A to the silver particles corresponding to silver particles B is 0.75 (see Table 1: Ex. 8), which falls within the instantly claimed range of 1:9 to 9:1.
Kobori further teaches that an electro-conductive adhesive composition may further comprise an amine-based curing agent ([0062]), which would necessarily adhere to the silver particles, including the silver particles having an average diameter of 0.09 µm corresponding to the instant silver particles A. Kobori teaches that the amine-based curing agent such as tertiary amines, akylureas, and imidazole may be used. Kobori does not specify that the alkylamine may be used as the amine-based curing agent.
However, Liang teaches that alkyl amines and imidazoles are both suitable for use as curing agents ([0043]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention as filed to substitute the imidazole of Kobori with an alkyl amine, with a reasonable expectation of success, as imidazoles and alkyl amines are art recognized equivalents for the same purpose as curing agents, as taught by Liang ([0043]).
Regarding claim 4, Kobori modified by Liang teaches wherein its electro-conductive adhesive composition comprises silver particles having an average particle diameter of 10-200 nm (Kobori: [0026]), which overlaps with the claimed range of less than 50 nm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05.
Response to Arguments
Applicant’s arguments, see pp. 3-4, filed 7/7/2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102(a)(2) and 35 U.S.C. 103 both over WO2019/013231, wherein Kobori (US 2021/0317342) is used as an English language equivalent, have been fully considered and are persuasive in view of the current amendments to the claims. Therefore, the previous rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of WO2019/013231, wherein Kobori (US 2021/0317342) is used as an English language equivalent, and Liang (2009/0181165), as detailed above.
Applicant’s arguments, see p.4, filed 7/7/2025, with respect to the previous nonstatutory double patenting rejection of claims 1-4 have been fully considered and are persuasive in view of the current amendments to the claims. Therefore, the previous double patenting rejection of claims 1-4 has been withdrawn.
Conclusion
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 ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571)272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
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