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 § 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 22, 23, 35, and 43 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.
Claims 22, 23, 35, and 43 each recite “wherein the alloy is from …wt% of X” it is unclear if the applicant is attempting to narrow down the claim to only the noted element or attempting to further limit the range of noted element. For the purposes of this examination, this limitation will be interpreted as the latter. The examiner suggests –wherein the X is from … wt%--.
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, 22, 23, 35, 42, and 43 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, 22, 23, 35, 42, and 43, Geng teaches:
A lead-free solder alloy consists of:
from 3.2/3 to 3.9/4 wt.% silver [2.5-4.0 wt% Ag; claim 1 and Figure 10 Alloy No 6 and 7];
at least 3 wt.%/from 3 to 3.5 wt% bismuth [1.5-3.5 wt% Bi];
from 5.5/3.2 to 6.2 wt.% antimony [5.0-9.0 wt% Sb];
from 0.4 to 0.6/0.7 wt.% copper [0.4-0.8 wt% Cu];
from 0.1/0.03 to 0.2/0.08 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 6.5 to 10 [at least Alloys No 6 and 7 in figure 10 teach this].
Geng does not teach:
the exact claimed ranges;
from 0.005/0.01 to 0.05/0.02/0.03 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, Alloy No 6 and 7, where the solder alloy consists of Sn, Ag, Bi, Sb, Cu, and Ni; claim 1 and figure 10.
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 embodiment 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.
Claims 42 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Arai et al. (US 2018/0029169 A1) in view of Ribas et al. (US 2019/0389012 A1).
Regarding claims 42 and 43, Arai teaches:
A lead-free solder alloy comprising:
from 3 to 4 wt.% silver [2-3.1 mass% Ag; abstract];
at least 3/from 3 to 3.5 wt.% bismuth [3.1-4.5 mass% Bi];
from 3.2 to 6.2 wt.% antimony [1-5 mass% Sb];
from 0.4 to 0.7 wt.% copper [0-1 mass% Cu];
from 0.03 to 0.08 wt.% nickel [0.01-0.25 mass% Ni];
from 0.0 to 0.02 wt.% germanium [0.001-0.05 mass% Ge may be present; 0055];
titanium [Ti may be present; 0057], and
the balance tin together with any unavoidable impurities [0016],
wherein:
the wt.% of antimony is greater than the wt.% of bismuth [at least examples 3, 7, and 9 teach this]; and
the sum of the wt.% of antimony and the wt.% of bismuth is from 6.5 to 10 [at least examples 3, 7, and 9 teach this].
Arai does not teach:
from 0.005/0.01 to 0.05/0.03 wt.% titanium,
the exact claimed ranges, and
the solder alloy consists of Sn, Ag, Bi, Sb, Cu, Ni, Ti, and optionally Ge.
Concerning the exact claimed ranges:
Refer to the rejection of claim 19.
Concerning the consisting of and Ti:
Arai teaches several examples where the solder alloy consists of Sn, Ag, Bi, Sb, Cu, and Ni; see Table 1. Arai also teaches adding 0.001-0.05 mass% Ge and/or Ti to the solder alloy to prevent oxidation or to suppress crack development; 0055-0057 and Table 1.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add 0.001-0.05 mass% Ge, if desired, to the Sn, Ag, Bi, Sb, Cu, and Ni solder in order to prevent oxidation or to suppress crack development.
Concerning the Ti:
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 embodiment 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 span across the entire claimed range however, one specific example, alloy 10 which has no Ge, does not demonstrate this. Additionally, some of the specific claimed endpoints are not based upon values found in the originally filed disclosure. Thus, for at least these reasons the alleged unexpected results are not commensurate with the scope of the claims. Note that any arguments drawn to alloy 17 suffer from at least the same deficiencies as above.
With respect to the Choudhury declaration, at best this implies there may be something unexpected with respect to 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.
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 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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