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 .
Election/Restrictions and Status of Claims
Applicant’s election without traverse of Invention I, claims 1-4 and 8-9 in the reply filed on 10/14/25 is acknowledged.
Claims 5-7 and 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/14/25.
As such, claims 1-4 and 8-9 are examined in this office action of which claims 3-4 and 8 were amended in the preliminary amendment dated 3/6/23.
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.
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 1-4 and 8-9 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.
Claim 1 recites a metal paste containing at least metal nanoparticles (A) having a number average primary particle size of 10 to 100 nm, wherein a cumulative weight loss value (L100) when a temperature is raised from 40°C to 100°C is 75 or less, a cumulative weight loss value (L150) when temperature is raised from 40°C to 150°C is 90 or more, and cumulative weight loss value (L200) when temperature is raised from 40°C to 200°C is 98 or more based on 100 cumulative weight loss value (L700) when the paste is heated from 40°C to 700°C at a heating rate of 30C/min in a nitrogen atmosphere. Thus applicant’s claim covers all metal pastes that include particles having a number average primary particle size of 10 to 100 nm in conjunction with the recited weight loss values. Applicant’s specification merely provides examples where the paste is sintered at 250°C and where at least one solvent within 50 degrees of the sintering temperature and at least one solvent whose boiling point or decomposition temperature is greater than 50 degrees above the sintering temperature (applicant’s specification, paragraph [0043]). However, these features do not necessarily result in the properties as claimed as shown in Table 1 in the specification. Here applicant provides examples using only silver, with a mixture of 17 and 800nm particles thereof, and incorporating one proprietary solvent into all of the examples (SOLPLUS540). This data shows that even when incorporating amounts of the solvents as claimed in claims 3 and 4, this does not necessarily result in the properties in claim 1. Thus, while applicant provides some limited examples within the scope of the claim, neither the specification nor these examples show how these weight loss values are achieved across the scope of the claims and therefore the claims lack written description support. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc) and MPEP § 2163.03(V). Claims 2-4 and 8-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claims 1-4 and 8-9 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim 1 covers all metal pastes with nanoparticles having an average particle size of 10 to 100 nm and where the paste has cumulative weight losses of 75 or less from 40 to 100°C, 90 or more from 40 to 150°C, and 98 or more from 40 to 200°C. The specification does not provide direction on how to achieve these levels of cumulative weight loss with all compositions of paste and with all types of metal. The specification merely provides a series of examples involving silver nanoparticles with an average particle size of 17nm and incorporating at least two solvents with differing boiling points with at least one within 50 degrees of the sintering temperature of 250°C and at least one other solvent with a boiling point greater than 50 degrees above the sintering temperature of 250°C. All of these examples include the solvent SOLPLUS540, but this is a proprietary blend of phosphate ester dispersants and therefore it is not clear how this paste is formed to have these properties outside of using this proprietary material. It is clear from the data disclosed in Table 1 that mere inclusion of solvents with boiling points within these ranges does not necessarily result in the claimed weight loss properties.
At the time of filing, the state of the art was such that metal pastes are known and that weight losses of a paste can be calculated, but how mixtures of chemicals and their interactions with metal nanoparticles result in weight loss of the resultant paste is not known. Thus, the disclosed examples in Table 1 of the specification, using a proprietary solvent SOLPLUS540 does not bear a reasonable correlation to the full scope of the claim. Applicant is merely providing examples using a single type of metal, with a mixture of 17 and 800nm particles thereof, and incorporating one proprietary solvent into all of the examples. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in the claim(s). A person of ordinary skill would need to experiment with numerous different metals and innumerable different combinations of solvents to find combinations that achieve these properties. Applicant’s data in Table 1 of the specification makes clear that this is not merely a function of the composition of these two or more different boiling point solvents as in claims 3-4 and as such applicant’s disclosure does not provide guidance on what types of materials achieve these properties. Claims 2-4 and 8-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claims 1-4 and 8-9 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.
Claim 1 recites the limitations “cumulative weight loss value (L100)”. “cumulative weight loss value (L150)”, and “cumulative weight loss value (L200)”. Claim 2 also recites the limitation “cumulative weight loss value (L200)”. While claim 1 goes on to explain that these values are all “based on 100 cumulative weight loss value (L700) when the paste is heated from 40°C to 700°C at a heating rate of 30C/min in a nitrogen atmosphere”, it is not clear how the values L100, L150, and L200 are calculated. Whether this is based upon heating the paste at a from 40°C to each of these temperatures at a heating rate of 30C/min in a nitrogen atmosphere, whether they are based on some other measurement of weight loss at these temperatures, or some other meaning. Claims 3-4 and 8-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 3 recites the limitation “based on 100 % by mass total amount of the metal paste for bonding containing metal particles containing metal nanoparticles (A), solvents, and additives such as a dispersant” in the last three lines. An identical recitation is made in the last 3 lines of claim 4. Given this recitation, it is not clear if the metal paste contains metal nanoparticles (A), solvents, and additives, whether the metal particles contain metal nanoparticles (A), solvents, and additives while the paste has other components to make a paste, or some other meaning.
Also, regarding claims 3 and 4, the phrase "such as" in the recitation “additives such as a dispersant “ renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 8-9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2017/0327701 A1 of Connor with evidentiary reference to "Feasibility of storable microcapsules with core-to-shell ratio designs on the setting time and mechanical properties of alkali-activated slag: Toward concrete canvas application environment." Of Sun, “Terpineol” hereinafter Chemical Book Terpineol, “Oleic Acid” hereinafter Chemical Book Oleic Acid and “Poly(acrylic Acid)” hereinafter Chemical Book Poly(acrylic Acid).
As to claims 1-2, it is not clear how the values L100, L150, and L200 are calculated, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring a mixture of solvents or organics where one has a lower boiling point or decomposition temperature and as second solvent has a higher boiling point or decomposition temperature as in paragraph [0042] of the specification. Further, while the preamble recites that it is “A metal paste for bonding”, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, as the claim recites a metal paste containing at least metal nanoparticles having a number average particle size of 10 to 100 nm, this fully sets forth a structure of a metal paste and therefore the intended use of “bonding” does not limit the structure of the metal paste.
Connor discloses metal paste formulations comprising mixtures of metal particles with specified particle size distributions and compositions (Connor, paragraph [0001]). Connor discloses forming a paste using a mix of metal particles including 60 g of Fe1 (low carbon steel particles, with a D50=4 μm and a D90=8 μm), 15g of Cu2 (copper nanoparticles, produced by chemical precipitation, with a D50=200 nm and a D90=500nn), and 15 g of Ni2 (nickel particles, produced by chemical precipitation, with a D50=100 nm and a D90=400 nm) (Connor, paragraph [0227] and [0219]-[0223]), where the Ni2 particle meets the claim limitation of metal nanoparticles having a number average particle size of 10 to 100 nm. Connor discloses where these metal particles are mixed with 9 g of solvent terpineol, 0.5 g lubricant OA (oleic acid, greater than 95% purity from Sigma-Aldrich), 0.1 g polymer PAA (polymer poly(acrylic acid), MW=5000, from Fisher Scientific), and 0.4 g binder EC10 (ethyl cellulose 10, industrial grade from Dow Chemical) (Connor, paragraphs [0227] and [0210]-[0216]). Terpineol has a boiling point of 213-218°C, Oleic acid has a boiling point of 360°C, polyacrylic acid has a boiling point of 116°C as evidenced by the Chemical Book website (Chemical Book Terpineol, 1st page; Chemical Book Oleic Acid, 1st page; and Chemical Book Poly(acrylic Acid), 1st page). Also, ethyl cellulose decomposes at temperatures between 300 and 400C as evidenced by Sun (Sun, pg. 7275, left column, 1st paragraph). As Connor discloses a metal paste with the claimed size of metal nanoparticles used in conjunction with organic compounds that boil or decompose at lower and higher temperatures, between 116C and 400C, Connor is disclosing a structurally identical metal paste and therefore it would be expected to exhibit identical properties of a cumulative weight loss value (L100) when a temperature is raised from 40°C to 100°C is 75 or less, a cumulative weight loss value (L150) when temperature is raised from 40°C to 150°C is 90 or more, and cumulative weight loss value (L200) when temperature is raised from 40°C to 200°C is 98 or more as well as where a cumulative weight loss value (L200) when a temperature is raised from 40°C to 200°C is 99.9 or less as required in claim 2. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
As to claims 3-4, it is not clear what is meant by “metal paste for bonding containing metal particles containing metal nanoparticles (A), solvents, and additives such as a dispersant”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as the metal paste contains metal particles, solvents, and additives and the metal particles contain metal nanoparticles. Connor discloses forming a paste using a mix of metal particles including 60 g of Fe1 (low carbon steel particles, with a D50=4 μm and a D90=8 μm), 15g of Cu2 (copper nanoparticles, produced by chemical precipitation, with a D50=200 nm and a D90=500nn), and 15 g of Ni2 (nickel particles, produced by chemical precipitation, with a D50=100 nm and a D90=400 nm) (Connor, paragraph [0227] and [0219]-[0223]), where the Ni2 and Cu2 particles meets the claim limitation of metal nanoparticles. Connor discloses where these metal particles are mixed with 9 g of solvent terpineol, 0.5 g lubricant OA (oleic acid, greater than 95% purity from Sigma-Aldrich), 0.1 g polymer PAA (polymer poly(acrylic acid), MW=5000, from Fisher Scientific), and 0.4 g binder EC10 (ethyl cellulose 10, industrial grade from Dow Chemical) (Connor, paragraphs [0227] and [0210]-[0216]), meeting the limitations of at least a solvent (terpineol) and additive (oleic acid among other organics). With respect to “wherein a solvent whose boiling point or decomposition temperature is Tb−50 (° C.) or more and Tb+50 (° C.) or less, accounts for 5% by mass or more and 10% by mass or less when a sintering temperature is Tb (° C.)” (emphasis added) in claim 3 and “the metal paste containing 1.5% by mass or less of a component whose boiling point or decomposition temperature is higher than the sintering temperature Tb+50 (° C.) when the sintering temperature is Tb (° C.)” (emphasis added), these are contingent limitations that only must be met when there is a sintering temperature and the “broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met”, see MPEP § 2111.04(II). In the instant case, the claims only require that the solvents have these properties when there is a sintering temperature of Tb. As the specific example of paste disclosed in Connor is not sintered it does not have a Tb, it meets the limitations merely by having the required structure as noted above.
As to claims 8-9, Connor discloses forming a paste using a mix of metal particles including 60 g of Fe1 (low carbon steel particles, with a D50=4 μm and a D90=8 μm), 15g of Cu2 (copper nanoparticles, produced by chemical precipitation, with a D50=200 nm and a D90=500nn), and 15 g of Ni2 (nickel particles, produced by chemical precipitation, with a D50=100 nm and a D90=400 nm) (Connor, paragraph [0227] and [0219]-[0223]) where metal particles Fe1 meet the claim limitation of further containing metal particles (B) whose average particle size (D50) is 1.0 to 5.0 μm in terms of volume measured by a laser diffraction particle size distribution device. Also, as Connor discloses including 15g of Ni2 (metal nanoparticles (A)) and 60g of Fe1 particles (metal particles (B)), this makes a ratio of ¼ or 0.25 of metal nanoparticles (A) to metal particles (B) where (A)/(B) is 0.25 or less as required by claim 9.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733