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 .
Withdrawn Rejections
The 35 U.S.C. §112, 2nd paragraph, rejection(s) of claims 8-12, made of record in the office action mailed 07/01/2025, page 2 have been withdrawn due to Applicant’s amendment in the response filed on 10/01/2025.
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.
Claim(s) 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Malmendier et al (US 3,951,669) in view of Matano et al. (JP 2017-007921).
Regarding claims 8, 11, 13 Malmendier discloses sealing mixtures consisting essentially of a sealing glass having a low sealing temperature and a high coefficient of thermal expansion, and a glass-ceramic additive that imparts a lower effective coefficient of expansion to the sealing mixture with a minimum effect on glass flow at the sealing temperature (abstract). Malmendier discloses additive is modified, beta-quartz type glass ceramic material (corresponds to first particle of the present invention) composed of silicon, aluminum and zinc oxides (col.3, lines 9-10). Malmendier et al teach a glass powder comprising in terms of weight percentages 45-65% of SiO2 and at least 35% of ZnO+Al2O3, wherein the molar ratio of ZnO to Al2O3 is 0.9-1.1. See column 3, lines 9-27. Malmendier discloses a solder sealing glass was melted having the following composition: 80% PbO, 8.5% ZnO, 10% B.sub.2 O.sub.3, 1.5% SiO.sub.2, and 4.8% (col. 4, example 2).
However, composition selected from the weight percent ranges taught by Malmendier et al. when converted to mole percentages read on the powder of claim 3. See the table below showing the four compositions listed in Example 1 converted to mole percentages which nearly anticipate claim 1 and six compositions selected from the weight percent ranges of Malmendier et al. converted to mole percentages which read on claim 3. The examples in terms of weight percentages converted to mole percentages have an effective range in terms of mol% of 55.52-73.92 mol% of SiO2, 13.07-22.25 mol% of Al2O3, and 13.02-22.23 mole% of ZnO. These ranges overlap instant claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Malmendier et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
SiO2
Al2O3
ZnO
Al2O3+ZnO
ZnO/Al2O3
Wt%
Mol%
Wt%
Mol%
Wt%
Mol%
Wt%
Mol%
Wt ratio
Mol ratio
Ex 1-1
55
65.09
25
17.43
20
17.48
45.0
34.91
0.80
1.00
Ex 1-2
60
69.6
22.3
15.24
17.7
15.16
40.0
30.40
0.79
0.99
Ex 1-3
65
73.92
19.5
13.07
15.5
13.02
35.0
26.08
0.79
1.00
Ex 1-4
45
55.52
30.6
22.25
24.4
22.23
55.0
44.48
0.80
1.00
Ex A
52
62.23
26
18.33
22
19.44
48.0
37.77
0.85
1.06
Ex B
50
60.23
27
19.19
23
20.49
50.0
39.68
0.85
1.07
Ex C
49
59.41
28
20.00
23
20.59
51.0
40.59
0.82
1.03
Ex D
52.5
62.67
25.5
17.94
22
19.39
47.5
37.33
0.86
1.08
Ex E
50
60.43
28
19.94
22
19.63
50.0
39.57
0.79
0.98
Ex F
52
62.34
27
19.07
21
18.59
48.0
37.66
0.78
0.97
However, Malmendier fails to disclose that the fine particle selected from SiO2 fine particle and Al2O3 fine particle being fused to the surfaces of the core particle.
Whereas, Matano discloses inorganic filler particle consisting of a glass particle and an inorganic fine particle coating a surface of the glass particle and having average particle diameter D50 less than 1 μm, where the glass particle is in a substantially spherical form and has average particle diameter of 1 μm or more (English abstract). The inorganic fine particle is selected from SiO2 or Al2O3 (English abstract).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to coat the inorganic fine particle such as SiO2 or Al2O3 having a diameter smaller than core particle as taught by Matano on to the glass-ceramic additive of Malmendier motivated by the desire to have improved processability and to form fine irregularities on the surface of the glass particles.
Regarding claim 9, As Malmendier discloses sealing glass comprising SiO2 as presently claimed, it therefore would be obvious that second particle would intrinsically have the claimed average circularity of 0.8 or more.
Regarding claim 14, As Malmendier in view of Matano discloses composite particles as presently claimed, it therefore would be obvious that composite particle would intrinsically have the claimed average circularity of 0.6 or more.
Regarding claim 10, with respect to the content of the first particle of 10 vol% or more, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 12, Malmendier discloses the glass is added to a resin or organic vehicle (column 6, lines 30-32).
Response to Arguments
Applicant’s arguments filed on 10/01/20258 have been fully considered, but they are not persuasive.
Applicant argues that in amended claim 8, the molar ratio of ZnO and Al2O₃ is 1.22 or more. On the other hand, Malmendier discloses "wherein ZnO and Al2O₃
are present in molar ratios ranging between about 0.9-1.1." Malmendier, claim 1. Therefore, the core particle in the claimed mixture is different from that disclosed in Malmendier. Furthermore, Malmendier requires that ZnO and Al₂O₃ are present in molar ratios ranging between about 0.9-1.1 as an essential element. Indeed, Malmendier discloses that "[t]he zinc and alumina are preferably in equal, or one-to-one molar ratio although the ratio may vary by about 10%, that is from a ratio of 0.9 up to one of 1.1, without serious consequences." Id. at C3:L15-18. Therefore, Malmendier teaches away from the present claims. Specifically, a person skilled in the art would be motivated to keep the molar ratio of ZnO and Al2O₃ within the narrow range of 0.9 to 1.1 as Malmendier teaches equal or near-equal molar amounts and allows only a narrow deviation, thereby discouraging ratios substantially outside 0.9-1.1, such as >1.22. Thus, a person skilled in the art would have had no motivation to modify Malmendier to use a molar ratio of ZnO and Al2O₃ of 1.22 or more, which is outside of the molar ratio range taught by Malmendier for avoiding serious consequences, with any reasonable expectation of success.
However, it should be noted that Applicant did not recite the limitation of the molar ratio of ZnO and Al2O₃ is 1.22 or more in claim 1, so the arguments with respect to molar ratio is not persuasive. Applicant has recited the mole% of ZnO in 22-43% and Al2O3 in an amount of 9-18%, so this limitation is being met by Malmendier. The examples in terms of weight percentages converted to mole percentages have an effective range in terms of mol% of 55.52-73.92 mol% of SiO2, 13.07-22.25 mol% of Al2O3, and 13.02-22.23 mole% of ZnO. These ranges overlap instant claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. Further, Malmendier discloses "wherein ZnO and Al2O₃ are present in molar ratios ranging between about 0.9-1.1." Malmendier discloses the zinc and alumina are preferably in equal, or one-to-one molar ratio although the ratio may vary by about 10%, that is from a ratio of 0.9 up to one of 1.1, without serious consequences. The molar ratio of 1.1 is just a preferred number and Malmendier does not explicitly discloses against having higher molar ratio of Zinc and alumina.
Applicant argues that Matano does not cure the above deficiencies of Malmendier with respect to claim 8. Furthermore, in the claimed mixture, the first composite particle including a core particle containing ZnO, Al₂O₃, and SiO₂ within the recited amounts is surprisingly capable of reducing the viscosity of a base material when the particle is blended into the base material. This is shown in the Examples in the present application. See, e.g., Tables 1 (spanning pages 33-35 of the original specification). This is surprising over the teachings of Malmendier and Matano, which do not teach or suggest the claimed mixture including a first composite particle in which the core particle has amounts of ZnO and Al2O₃ within the claimed ranges, much less the low viscosity, which can enhance the fluidity and moldability of the base material.
However, the argument is not persuasive as Examiner does not agree to the argument which recites that it do not teach or suggest the claimed mixture including a first composite particle in which the core particle has amounts of ZnO and Al2O₃ within the claimed ranges. Applicants’ attention is drawn to Malmendier which discloses a solder sealing glass was melted having the following composition: 80% PbO, 8.5% ZnO, 10% B.sub.2 O.sub.3, 1.5% SiO.sub.2, and 4.8% (col. 4, example 2). However, composition selected from the weight percent ranges taught by Malmendier et al. when converted to mole percentages read on the powder of claim 3. See the table below showing the four compositions listed in Example 1 converted to mole percentages which nearly anticipate claim 1 and six compositions selected from the weight percent ranges of Malmendier et al. converted to mole percentages which read on claim 3. The examples in terms of weight percentages converted to mole percentages have an effective range in terms of mol% of 55.52-73.92 mol% of SiO2, 13.07-22.25 mol% of Al2O3, and 13.02-22.23 mole% of ZnO. These ranges overlap instant claim 1. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
As Malmendier discloses composite particle including a core particle containing ZnO, Al₂O₃, and SiO₂ within the recited amounts as stated above, it would be obvious that composite particle, absent evidence to the contrary would intrinsically have unexpected properties of present invention.
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788