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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/4/26 has been entered.
Drawings
The drawings are objected to because Figures 9 and 10 have two “18”s when it appears one should be “19”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19, 35, and 52-54 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 19 and 52 recite a specific combination of elements having specific ranges. While the originally filed disclosure broadly discloses these combination of elements and ranges it does not do so as claimed. For example, originally filed claim 22 almost matches claim 52 except Ge may not be present, and the amount of copper differs, 0.3 to 0.8 wt% vs 0.4 to 0.6 wt%, respectively. Other examples are also close but fail in some manner. Now, there is one specific example that falls within these claims, Alloy 10, but this alloy does not teach or suggest any ranges. Therefore, there is no guidance or teaching in the originally filed disclosure that the current claimed specific combination of elements having the claimed ranges would have any unexpected benefits/results. It is important to note that the unexpected arguments appear to have been first presented in applicant’s arguments dated 9/10/25 and the claims of the same date do not match those currently presented or any specific example as originally filed. Thus, this further shows that the unexpected alloy range is not constant and originally presented.
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 19, 35, and 52-54 are rejected under 35 U.S.C. 103 as being unpatentable over Geng et al. (US 2020/0269360 A1) in view of Ribas et al. (US 2019/0389012 A1).
Regarding claims 19, 35, and 52-54, Geng teaches:
A lead-free solder alloy consists of:
from 3/2.8 to 4/3.2 wt.% silver [2.5-4.0 wt% Ag; claim 1];
from 3/2.8 to 4/3.2 wt% bismuth [1.5-3.5 wt% Bi];
from 5.5 to 6.5 wt.% antimony [5.0-9.0 wt% Sb];
from 0.4 to 0.6 wt.% copper [0.4-0.8 wt% Cu];
from 0.1/0.08 to 0.2 wt.% nickel [0.05-0.35 mass% Ni];
from 0.0 to 0.02 wt.% germanium [Geng adds 0 wt%]; and
the balance tin together with any unavoidable impurities [balance Sn],
wherein:
the wt.% of antimony is greater than the wt.% of bismuth [this is always true due to the minimum of Sb being more than the maximum of Bi]; and
the sum of the wt.% of antimony and the wt.% of bismuth is from 7.5 to 10 [at least Alloys No 6-8 in figure 10 teach this].
Geng does not teach:
the exact claimed ranges;
from 0.005 to 0.02 wt.% titanium; and
the solder alloy consists of Sn, Ag, Bi, Sb, Cu, Ni, and Ti.
Concerning the exact claimed ranges:
Geng and the claims differ in that Geng does not teach the exact same ranges as recited in the instant claims.
However, one of ordinary skill in the art at the time/before the effective filing date of the invention would have considered the invention to have been obvious because the ranges taught by Geng overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference; MPEP 2144.05. This reasoning applies to any claim and limitation in this action where a range is being claimed.
Concerning the Ti and consists of language:
Geng teaches several examples, Alloys No 6-8 of figure 10, and a range, claim 1, where the solder alloy consists of Sn, Ag, Bi, Sb, Cu, and Ni.
Ribas generally teaches Sn-Ag-Bi-Sb-Cu solders wherein 0.008-0.5 wt% Ni and 0.005-0.015 wt% Ti may be added to improve high temperature mechanical properties and a specific alloy consisting of Sn-Ag-Bi-Sb-Cu-Ni-Ti; 0010-0015, 0074, 0075, 0077, and 0095.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add 0.005-0.015 wt% Ti in order to improve high temperature mechanical properties. Additionally, the claims would have been obvious because a particular technique, i.e. “adding 0.005-0.015 wt% Ti to Sn-Ag-Bi-Sb-Cu-Ni alloy solders”, 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.
Response to Arguments
Applicant's arguments filed 3/19/26 have been fully considered but they are not persuasive.
In response to the applicant’s unexpected arguments, these are not persuasive. The applicant alleges that the unexpected properties of creep rupture and elongation are a trend that span across the entire claimed ranges however, one specific example, alloy 10 which has no Ge, does not demonstrate this trend across the claimed range. Additionally, the claimed ranges of the 9/10/25 claims, the date of applicant’s first attempt at presenting unexpected arguments, and those currently presented do not match. Even more, the independent claims within each amended submission have different ranges. Thus, this further shows that the unexpected alloy range is not constant, which implies it was not known at the time of filing and is still not known.
With respect to the Choudhury declaration, at best this implies there may be something unexpected with respect to the specific composition of Alloy 10. Additionally, the declaration also demonstrates the addition of Ti improves the properties of the Geng alloy as suggested by the prior art. Even so, one data point within the claimed ranges is not enough to establish an unexpected trend when there are seven element ranges. Thus, for at least these reasons the alleged unexpected results are not commensurate with the scope of the claims.
Conclusion
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
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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