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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2026 has been entered.
Response to Amendment and Status of Claims
Pending and under examination: claims 1 and 3-5
Cancelled: claim 2
Amended: claims 1 and 5
Rejected: claims 1 and 3-5
Specification Objection – Withdrawn
As noted by the applicant’s arguments on page 3 of the response, box 10 on the PTOL-326 form was checked by mistake and therefore has been unchecked herein.
Claim Objections
Applicant is advised that should claim 3 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Response to Arguments
Applicant's arguments filed 08/26/2026 have been fully considered but they are not persuasive.
Applicant’s arguments on pages 4-5 discuss the terms “cellulose nanofibrils” (CNF) and “microfibrillated cellulose” (MFC) as defined by ISO/TS 20477:2023. Aside from the fact that the attached ISO document is from 2023, which is after the effective filing date of the claimed invention (12/23/2020) and is therefore not eligible to be considered as an evidentiary reference (because the glossary of terms are not “universal facts” – MPEP § 2124), the issue is that although the instant claimed use the term “microfibrillated”, the limitation of “microfibrillated” as defined in the instant claims overlaps with both the definition of CNF and MFC (in ISO/TS 20477:2023), particularly in view of the fact that the second fibrous cellulose listed in the instant claims has a range as low as 1 nm, which is well-within the conventionally known range of “nano”-materials and “nano”-fibers.
Moreover, the applicant’s arguments are not found persuasive because they are not commensurate in scope with the claims, which only specify the lengths and not the diameters or any other physical characteristics.
Therefore, the Examiner does not find the arguments persuasive, and maintains that the claims only require that the cellulose fibers be microfibrillated, which notably is a product-by-process limitation (in claim 1), and that the cellulose fibers of Tanaka satisfy the claimed particle size ranges. “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. Moreover, Tanaka teaches that the lengths can be 10 µm [0029], whilst the average length is 0.1 µm [0029], which satisfies the claimed length limitations.
The applicant argues that structural characteristics of MFC itself are important to the presently claimed invention, 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 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 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (JP 2019198871 A; Espacenet English machine translation cited and previously 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, and the average particle length can be 10 µm as discussed above, 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. The process of pulverization also satisfies the “mixing” limitation because during the production (via fibrillation), the collision treatment serves to mix the particles together.
Tanaka further teaches a cellulose content of 0.05 wt% [0054], which lies within the claimed range of 50-20,000 ppm (0.005-2%).
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 claims 3 and 5, Tanaka teaches the solder material of claim 1 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, and the average particle length can be 10 µm as discussed above, 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. The process of pulverization also satisfies the “mixing” limitation because during the production (via fibrillation), the collision treatment serves to mix the particles together.
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
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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