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 .
Response to Amendment and Status of Claims
Pending and under examination: claims 1-5
Amended: claims 1-2 and 4
Rejected: claims 1-5
Drawings
The drawings were received on 01/29/2026. These drawings are accepted.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
The applicant’s arguments are based on there being a patentable distinction between the microfibrillated cellulose (MFC) fibers in the claimed invention vs. the cellulose nanofibers (which are made by a fibrillation treatment as discussed in the 103 rejection below). The Examiner disagrees with the arguments – the claims only require that the cellulose fibers be microfibrillated, which notably is a product-by-process limitation, and that the cellulose fibers satisfy the claimed particle size ranges, which are met by Tanaka. “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.” (MPEP 2113).
Tanaka meets the microfibrillation product-by-process limitations, because the fibers are formed by fibrillation treatment, resulting in nanofibers having an average thickness of 3-200 nm and an average length of 0.1 μm or greater (Abstract), overlapping with the claimed ranges, and overlapping with the range implied by “micro-” fibrillation.
The applicant argues characteristics such as clumps/clumped fibers or uniformity, but such characteristics are absent from the claims and instant specification. The claims noticeably recite “comprising” which is an open-ended transitional phrase which does not preclude other forms of cellulose fibers or components from being present (MPEP 2111.03 I.).
The applicant’s arguments state “On the other hand, the claimed solder material does contain and comprises clumped fibers (MFC) as a main constituent and the presently claimed method of producing uses such clumped fibers (MFC)”; the claims and instant specification are silent regarding “clumped fibers”. The instant specification [0030] merely states “various cellulose raw materials are mechanically and/or chemically treated to increase the specific surface area and adjust the diameter and length of fibers.”
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (JP 2019198871 A; Espacenet English machine translation cited and attached).
Regarding claim 1, Tanaka teaches discloses a solder paste that includes a solder alloy powder and a solder paste flux including a resin, a solvent, an activator, and a thixotropic agent (Abstract), and Tanaka further teaches that the solder paste includes a dispersion of cellulose nanofibers having an average thickness of 3-200 nm and an average length of 0.1 μm or greater (Abstract).
Tanaka further teaches that the cellulose nanofibers are obtained by performing a fibrillation treatment by an underwater collision method or the like [0019], wherein the nano-refining is performed by disrupting interactions between the cellulose fibers [0029], a rosin-based resin or the like is used as the resin [0034], and the cellulose nanofibers are blended in a ratio of 0.05 wt% with respect to the total amount of flux ([0054] and examples).
Tanaka further teaches in paragraph [0029]:
“This ACC method can pulverize cellulose fibers to reduce their average particle length to 1/4 or less, or to 10 μm, resulting in cellulose nanofibers with an average diameter of 3 to 200 nm and an average length of 0.1 μm or more. On the other hand, in the counter collision treatment, the applied energy is far less than the energy require to break the covalent bond (estimated to be 1/300 or less), and the degree of polymerization of cellulose does not decrease”
Therefore, because the average length thereof is 0.1 μm or greater, which overlaps with both the ranges of 1 µm or more and less than 1 mm and 1 nm or more and less than 1 µm, it is prima facie expected that based on the method of making the pulverized cellulose, which does not include a method of filtering or separating out fibers based on particle size or particle size distribution, it is strongly expected that there are some cellulose fibers both in the claimed “microfibrillated cellulose” size range and the claimed “fibrous cellulose” range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Regarding claim 2, Tanaka teaches the solder material of claim 1 above, and further teaches a cellulose content of 0.05 wt% [0054], which lies within the claimed range of 50-20,000 ppm (0.005-2%).
Regarding claims 3 and 5, Tanaka teaches the solder material of claims 1 and 2 above above, and as discussed above, teaches flux, solvent, activator, and a rosin-based resin (Abstract, [0033]).
Regarding claim 4, Tanaka teaches discloses a solder paste and a method of making the paste [0045], that includes a solder alloy powder and a solder paste flux including a resin, a solvent, an activator, and a thixotropic agent (Abstract), and Tanaka further teaches that the solder paste includes a dispersion of cellulose nanofibers having an average thickness of 3-200 nm and an average length of 0.1 μm or greater (Abstract). The resin can be a rosin-based resin [0033].
Tanaka further teaches that the cellulose nanofibers are obtained by performing a fibrillation treatment by an underwater collision method or the like [0019], wherein the nano-refining is performed by disrupting interactions between the cellulose fibers [0029], a rosin-based resin or the like is used as the resin [0034], and the cellulose nanofibers are blended in a ratio of 0.05 wt% with respect to the total amount of flux ([0054] and examples).
Tanaka further teaches in paragraph [0029]:
“This ACC method can pulverize cellulose fibers to reduce their average particle length to 1/4 or less, or to 10 μm, resulting in cellulose nanofibers with an average diameter of 3 to 200 nm and an average length of 0.1 μm or more. On the other hand, in the counter collision treatment, the applied energy is far less than the energy require to break the covalent bond (estimated to be 1/300 or less), and the degree of polymerization of cellulose does not decrease”
Therefore, because the average length thereof is 0.1 μm or greater, which overlaps with both the ranges of 1 µm or more and less than 1 mm and 1 nm or more and less than 1 µm, it is prima facie expected that based on the method of making the pulverized cellulose, which does not include a method of filtering or separating out fibers based on particle size or particle size distribution, it is strongly expected that there are some cellulose fibers both in the claimed “microfibrillated cellulose” size range and the claimed “fibrous cellulose” range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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