DETAILED ACTION/EXAMINER’S COMMENT
This Office action responds to the amendments filed on 01/12/2026.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Amendment Status
Applicant’s response filed on 01/12/2026 in reply to the non-final rejection mailed on 08/11/2025, has been entered. The present Office action is made with all previously suggested amendments being fully considered. Claims Accordingly, pending in this Office action are claim(s) 21-29, 41, & 42. Claim(s) 25, 26, & 29 are canceled. Claims 21-24, 27, 28, 41, & 42 will be examined in this Office action.
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.
Claims 21, 22, 27, 28, 41, & 42 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 20070172690) in view of Iuchi (US 20170330850) & Dutta (US 20170321340) and further in view of Yamaguchi (US 20100159257).
Regarding Claim 21, Kim (see, e.g., fig. 7, para.0031) shows a Sn-Bi-In-based low melting-point joining member, comprising
a first composition (first junction composition) having a plurality of layers (n-layer structure, at least an upper and a lower layer) having different concentrations of Sn, Bi, and In (see, e.g., para.0031),
wherein the first composition includes, at least,
a SnIn layer (upper layer), the SnIn layer containing Sn and In (see, e.g., para.0031),
and a BiIn layer (lower layer), the BiIn layer containing Bi and In (see, e.g., para.0031),
a percentage of a total amount of Sn, Bi and In in the first composition is 95 mass % or more (tin ranges between 95-98% mass % and satisfies the range for the total amount of the three elements, see, e.g., para.0023, para.0035),
Regarding the limitations, “a SnIn layer (upper layer), the SnIn layer containing Sn and In, and a BiIn layer (lower layer), the BiIn layer containing Bi and In,” Kim (see, e.g., para.0031) teaches the upper layer can comprise Sn, Ag, and In and the lower layer can comprise Sn, Bi, and In. The claim language “containing” does not limit the layer to just SnIn or BiIn. See MPEP 2111.03 "The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps."
Therefore, the SnAgIn upper layer and the SnBiIn lower layer of Kim anticipates the limitations.
Kim, however, fails to show, the first composition is a plated laminate.
Iuchi (see, e.g., para.0009-0011, para.0019, para.0060-0067, fig. 2d), in a similar device to Kim, teaches that creating a plated laminate as the first composition of Kim, by electroplating Sn film 24 & Bi film 25 and laminating them with one another (see, e.g., para.0065), would stabilize the composition of materials of the Sn-Bi-In-based low melting-point joining member.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to use the plated laminate of Iuchi as the first composition of Kim to stabilize the composition of materials of the Sn-Bi-In-based low melting-point joining member.
Kim, in view of Iuchi, however, fails to show
the SnIn layer into which In is diffused,
and the BiIn layer into which In is diffused,
Dutta (see, e.g., figs. 1a-b, fig. 3, para.0019, para.0026, para.0041, claim 20) in a similar device to Kim, in view of Iuchi teaches that diffusing Indium into a Sn electroplated layer or a SnBi electroplated layer would prevent whisker growth and subsequent short circuiting.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to diffuse Indium into the SnIn layer and the BiIn layer of Kim, in view of Iuchi, to prevent whisker growth subsequent short-circuiting.
Kim, in view of Iuchi & Dutta, however, fails to show
the plated laminate has a composition within a range represented by a quadrangle in a Sn-Bi-In ternary phase diagram, the quadrangle having four vertices including:
Point 1 (1, 69, 30),
Point 2 (26, 52, 22),
Point 3 (40, 10, 50),
and Point 4 (1, 25, 74),
where Point (x, y, z) is defined as a point of x mass% Sn, y mass% Bi, and z mass% In,
and a peaktop temperature is 60 to 110o C for all endothermic peaks that are observed by using a differential scanning calorimeter (DSC) when the first composition is heated from a room temperature to 300o C at a heating rate of 10o C/min under a nitrogen atmosphere.
However, ranges of mass composition will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation” In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Yamaguchi (see, e.g., table 1), in a similar device to Kim, in view of Iuchi & Dutta, teaches example 2 with mass composition point (26, 50, 24), in a similar device to Kim, in view of Iuchi & Dutta would be an obvious and suitable mass composition. Since the applicant has not established the criticality (see next paragraph below) of the claimed range, and similar values have been used in the art, it would have been obvious to one of ordinary skill in the art to use mass composition of the of Yamaguchi in the device of Kim, in view of Iuchi & Dutta as an obvious and suitable mass composition.
Criticality
The specification contains no disclosure of either the critical nature of the claimed temperature and pressure ranges or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Regarding the limitation, “and a peaktop temperature is 60 to 110o C for all endothermic peaks that are observed by using a differential scanning calorimeter (DSC) when the first composition is heated from a room temperature to 300o C at a heating rate of 10o C/min under a nitrogen atmosphere,”
Kim, in view of Iuchi & Dutta and further in view of Yamaguchi (see, e.g., para.0068, table 1, example 2), shows the mass composition of example 2 has a peaktop temperature of 98o C and is observed by using a DSC. However, the peaktop temperature would be an inherent property of the plated laminate regardless of whether it is or is not measured by a differential scanning calorimeter (DSC). Therefore, prior art would only need to show the plated laminate with the claimed mass composition and would not require explicit mention of the DSC to render the claim obvious.
Regarding Claim 22, Kim, in view of Iuchi & Dutta and further in view of Yamaguchi (example 2, see, e.g., table 1), shows the Sn-Bi-In-based low melting-point joining member according to claim 21,
wherein the plated laminate has a composition within a range represented by a quadrangle in a Sn-Bi-In ternary phase diagram, the quadrangle having four vertices including:
Point 1 (1, 69, 30),
Point 2 (26, 52, 22),
Point 3a (35, 25, 40),
and Point 4b (1, 59, 40),
Sn 26%, Bi 50%, In 24% (example 2, see, e.g., table 1)
where Point (x, y, z) is defined as a point of x mass % Sn, y mass % Bi and z mass % In,
and wherein a peaktop temperature is 69 to 110°C (98o C, see, e.g., table 1) for all endothermic peaks that are observed by using a differential scanning calorimeter (DSC) when the plated laminate is heated from a room temperature to 300°C at a heating rate of 10°C/min under a nitrogen atmosphere.
Regarding Claim 27, Kim (see, e.g., para.0023, para.0031), in view of Iuchi & Dutta and further in view of Yamaguchi, shows the Sn-Bi-In-based low melting-point joining member according to claim 21,
wherein the Sn-Bi-In-based low melting-point joining member contains one or more mixed components selected from the group consisting of Ag, Cu, Ni, Zn, and Sb (see, e.g., para.0031),
and a total mass of the mixed components in the Sn-Bi-In-based low melting-point joining member is 0.001 to 3.0 mass% (see, e.g., para.0023).
Kim (see, e.g., para.0023, para.0031) states the Sn-Bi-In-based low melting-point joining member contains 0.1-1.0 mass % of Ag.
Regarding Claim 28, Kim (see, e.g., fig. 7, para.0068), in view of Iuchi & Dutta and further in view of Yamaguchi, shows the Sn-Bi-In-based low melting-point joining member according to claim 21,
wherein the Sn-Bi-In-based low melting-point joining member is disposed on a film 44 (see, e.g., para.0068) formed of one or more kinds of undermetal selected, as the undermetal, from the group consisting of
Ti, Ni, Cu, Au, Sn, Ag, Cr, Pd, Pt, W, Co, TiW, NiP, NiB, NiCo, and NiV (Ni, Cu, or Au, see, e.g., para.0068).
Regarding Claim 41, Kim (see, e.g., fig. 7, para.0031, para.0080-0081), in view of Iuchi & Dutta (see, e.g., para.0047, para.0080) and further in view of Yamaguchi, shows the Sn-Bi-In-based low melting-point joining member according to claim 21,
wherein with respect to the plated laminate, the SnIn layer and the BiIn layer are stacked, with the BiIn layer 52 (see, e.g., para.0031, para.0080) positioned below the SnIn layer 54 (see, e.g., para.0031, para.0081), and In is diffused to both the SnIn layer and the BiIn layer almost uniformly when observed with a cross-section Scanning Electron Microscope - Energy Dispersive X-ray Spectroscopy (or SEM-EDX).
Kim (see, e.g., fig. 7) shows 52 positioned below 54. Dutta (see, e.g., para.0047, para.0080) shows the In diffusion would be nearly uniform or uniform in grain structure. The limitation “almost uniformly” is broad and under broadest reasonable interpretation any uniformity would render the limitation obvious.
Regarding the limitation, “In is diffused to both the SnIn layer and the BiIn layer almost uniformly when observed with a cross-section Scanning Electron Microscope - Energy Dispersive X-ray Spectroscopy (or SEM-EDX),”
Kim, in view of Iuchi & Dutta (see, e.g., para.0080) and further in view of Yamaguchi, shows In diffusion observed by Energy Dispersive X-ray Spectroscopy. However, In diffusion would be an inherent property of the plated laminate, in view of Dutta, regardless of whether it is or is not observed by Energy Dispersive X-ray Spectroscopy. Therefore, prior art would only need to show the plated laminate with the claimed uniformity and would not require explicit mention of EDS to render the claim obvious.
Regarding Claim 42, Kim (see, e.g., fig. 7, para.0031, para.0080-0081), in view of Iuchi & Dutta (see, e.g., para.0047, para.0080) and further in view of Yamaguchi, shows the Sn-Bi-In-based low melting-point joining member according to claim 21,
wherein with respect to the plated laminate, the SnIn layer and the BiIn layer are stacked, with the SnIn layer 54 (see, e.g., para.0031, para.0081) positioned below the BiIn layer 52 (see, e.g., para.0031, para.0080), and In is diffused to both the SnIn layer and the BiIn layer almost uniformly when observed with a cross-section Scanning Electron Microscope - Energy Dispersive X-ray Spectroscopy (or SEM-EDX).
Since the claim language of claims 42 & 21, are silent with regards to any position or structure, Examiner interprets Kim (see, e.g., fig. 7) upside down wherein SnIn layer 54 is positioned below BiIn layer 52.
Dutta (see, e.g., para.0047, para.0080) shows the In diffusion would be nearly uniform or uniform in grain structure. The limitation “almost uniformly” is broad and under broadest reasonable interpretation any uniformity would render the limitation obvious.
Regarding the limitation, “In is diffused to both the SnIn layer and the BiIn layer almost uniformly when observed with a cross-section Scanning Electron Microscope - Energy Dispersive X-ray Spectroscopy (or SEM-EDX),”
Kim, in view of Iuchi & Dutta (see, e.g., para.0080) and further in view of Yamaguchi, shows In diffusion observed by Energy Dispersive X-ray Spectroscopy. However, In diffusion would be an inherent property of the plated laminate, in view of Dutta, regardless of whether it is or is not observed by Energy Dispersive X-ray Spectroscopy. Therefore, prior art would only need to show the plated laminate with the claimed uniformity and would not require explicit mention of EDS to render the claim obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 20070172690) in view of Iuchi (US 20170330850), Dutta (US 20170321340), & Yamaguchi (US 20100159257) and further in view of Izeki (JP 2018079480).
Regarding Claim 23, Kim, in view of Iuchi, Dutta & Yamaguchi, shows the Sn-Bi-In-based low melting-point joining member according to claim 21,
Kim, in view of Iuchi, Dutta & Yamaguchi, however, fails to show,
wherein the plated laminate has a composition containing
Sn: 22 to 30 mass%, Bi: 20 to 28 mass%, and In: 42 to 58 mass%,
or a composition containing
Sn: 15 to 19 mass%, Bi: 43 to 51 mass%, and In: 30 to 42 mass%,
when a total amount of Sn, Bi, and In is 100 mass%.
However, ranges of mass composition will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation” In re Aller, 220 F.2d 454,456,105 USPQ 233, 235 (CCPA 1955).
Izeki (see, e.g., table 1, sample 16, para.0015-0022), in a similar device to Kim, in view of Iuchi, Dutta & Yamaguchi, shows a Sn-Bi-In-based low melting-point joining member 26.8%, Bi 27.6%, & In 45.6%, would be a suitable and obvious mass composition for forming the joining member into the plated laminate of in view of Iuchi, Dutta & Yamaguchi. Since the applicant has not established the criticality (see next paragraph below) of the claimed range, and similar ranges have been used in the art, it would have been obvious to one of ordinary skill in the art to use value of Izeki in the device of Kim, in view of Iuchi, Dutta & Yamaguchi as an obvious and suitable mass composition.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 24 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Izeki (JP 2018079480).
Regarding Claim 24, Izeki (see, e.g., table 1, sample 16, para.0015-0022), shows a Sn-Bi-In-based low melting-point joining member,
wherein a percentage of a total amount of Sn, Bi and In is 95 mass% or more (sample 16, see, e.g., table 1),
and wherein the Sn-Bi-In-based low melting-point joining member has a composition containing
Sn: 22 to 30 mass%, Bi: 20 to 28 mass%, and In: 42 to 58 mass%,
Sn 26.8%, Bi 27.6%, & In 45.6% (sample 16, see, e.g., table 1)
and a peak top temperature is 60 to 110°C (anticipated as an inherent property of sample 16, see, paragraph 18 above) for all endothermic peaks that are observed by using a differential scanning calorimeter (DSC) when the Sn-Bi-In-based low melting-point joining member is heated from a room temperature to 300°C at a heating rate of 10°C/min under a nitrogen atmosphere.
Response to Arguments
Applicant’s arguments, see pages 9-13 filed on 01/12/2026, with respect to claim(s) 21-27 & 29 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
THIS ACTION IS MADE FINAL. 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 FERNANDO JOSE RAMOS-DIAZ whose telephone number is (571) 270-5855. The examiner can normally be reached Mon-Fri 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached on 571-272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F.R.D./ Examiner, Art Unit 2814
Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814
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