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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/22/2026 has been entered.
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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 5-6 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 pre-AIA the applicant regards as the invention.
Re claims 5-6, the phrases “configured to have” and “formulated to be” is not clear as to how this occurs as steps are absent to make this possible. The specification lacks direction in this regard.
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 1 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over
ISAO (US 20200277515) in view of JP 4212035 B2 (JP) and further in view of WO 2019065379 A1 (Sasaki et al.)
It is noted that when utilizing WO2019065379 in the above paragraph, the disclosures of the reference are based on US20210060655 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO2019065379 are found in US20210060655.
Re claims 1 and 5-6, Isao discloses a film-type firing material, which forms a sintered bonding layer between a chip and a substrate, the material comprising 15-98 mass% of sinterable metal particles and 2-50 wt% of a binder component, wherein silver nanoparticles are used as the sinterable metal particles ( see claims 1-8, paragraphs
[0049]-[0052], [0091]-[0093], [0131]-[0135], and [0244]-[0251], and figure 3). See further [242-244], Isao to overlapping Ag particle size. Isao discloses a film-type firing material having a support sheet, the firing material comprising: a support sheet (2) including a base film (3) and an adhesive layer (4); and a film firing material (1) containing sinterable metal particles and a binder component, wherein silver nanoparticles are used as the sinterable metal particles (see patented claims 1-7, paragraphs [0049]-[0052], [0131]-[0135], and [0246]-[0251], and figure 3).
Isao discloses the Ag powder and an organic binder, but not the size requirement; and other properties; however, one could have derived the requirements by means of optimization via the same or similar sintering process [259] by a person skilled in the art, and thus said claim is not considered to produce any different or remarkable effect that could not be predicted by a person skilled in the art.
JP discloses an Ag adhesive composition of adhesive flake powder having overlapping ranges of “90 to 99 wt% of Ag powder and 1 to 10 wt% of a binder” and total content %. See under claims heading 14 and [0028], teaches overlapping wt% organic binder.
Re claim 1, see [0018] overlapping ranges the average thickness of the flaky silver powder used is preferably 0.1 to 1.5 μm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of claimed materials for conductivity taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Further re claim 1, The combination doesn’t teach the exact particle dimensions claimed.
Sasaki teaches overlapping ranges [0042] the average particle diameter of the flaky silver powder is preferably 1 μm or more and 50 μm or less in terms of the cumulative 50% volume particle diameter (D50) by the laser diffraction scattering particle size distribution measurement method. In the case where the average particle diameter is less than 1 μm, the conductivity of the conductive film tends to be low due to the insufficient contact area among the flaky silver powder. In the case where the average particle diameter exceeds 50 μm, the crosslinked structure formed tends to be short due to the too large size of the individual particles of the flaky silver powder. The average particle diameter of the flaky silver powder is more preferably from 3 to 30 μm, and further preferably from 6 to 15 μm.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of claimed materials for conductivity taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 1 and 5-6, Although there is no explicit disclosure that the paste composition is “sintered…being coated” or “after pressure sintering” or the “configured” or “formulated” temperature as claimed, the claims are directed to a composition. It is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that JP meets the requirements of the claimed body, JP clearly meet the requirements of the present claim.
Claims 1, and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 5616173 A (Okamoto et al.) in view of WO 2019065379 A1 (Sasaki et al.)
It is noted that when utilizing WO2019065379 in the above paragraph, the disclosures of the reference are based on US20210060655 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO2019065379 are found in US20210060655.
Re claims 1, 5-6, Okamoto discloses an Ag adhesive paste composition (Table 1) of adhesive flake powder having overlapping ranges of up to 99 wt% of Ag powder” remainder up to 10 wt% of a binder. See 2:45-52 and 3:1-15, to overlapping wt% Ag and organic binder and total content. Re claim 3, see Table 1 overlapping ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of claimed materials for conductivity taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claim 1, see Table 1 overlapping shape varying from flake shape and while the range of axis and thickness is not taught, because the same material, powder, and shape are taught, absent of the showing of the criticality for the thickness range, it would have been obvious within the level of ordinary skill in the art to select a suitable thickness for Okamoto from commercially available powders, or the A silver powder as in Table 1. Further, for optimization of prior art conditions through routine experimentation: Generally, differences in thickness will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such thickness is critical.
Further re claim 1, The Okamoto doesn’t teach the exact particle dimensions claimed.
Sasaki teaches overlapping ranges [0042] the average particle diameter of the flaky silver powder is preferably 1 μm or more and 50 μm or less in terms of the cumulative 50% volume particle diameter (D50) by the laser diffraction scattering particle size distribution measurement method. In the case where the average particle diameter is less than 1 μm, the conductivity of the conductive film tends to be low due to the insufficient contact area among the flaky silver powder. In the case where the average particle diameter exceeds 50 μm, the crosslinked structure formed tends to be short due to the too large size of the individual particles of the flaky silver powder. The average particle diameter of the flaky silver powder is more preferably from 3 to 30 μm, and further preferably from 6 to 15 μm.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of claimed materials for conductivity taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 1 and 5-6, Although there is no explicit disclosure that the paste composition is “sintered…being coated” or “after pressure sintering” or the temperature as claimed, the claims are directed to a composition. It is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Okamoto meets the requirements of the claimed body, Okamoto clearly meet the requirements of the present claim.
Response to Arguments
Applicants arguments are not convincing. Applicant’s argue the size and property requirements. See the new reference above in the new ground of rejection. It is of note that since the combination employs the same materials as Applicant, it is inherent that the Ag paste functions in the same manner as claimed by applicant. Further, the crux of applicant’s claim is to the composition not the particle size. Applicant has not provided any objective evidence to state the combination would not serve to have the size requirements or properties as claimed. Further see Mpep 2141.02: V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY "In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency.
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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