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
Applicant’s election without traverse of Group II, claims 2 and 7-10, in the reply filed on 11/28/2025 is acknowledged.
Claims 1 and 3-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11/28/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/03/2023, 04/10/2025, and 12/29/2025 have been considered by the examiner.
Claim Objections
Claim 8 is objected to because of the following informalities: the first instance of “TG residue” preferably should include the full terminology instead of the abbreviation. In the instant case, it appears that thermogravimetric or a similar term is intended based upon at least Paragraph 0034 of the as-filed specification. Appropriate correction is required.
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 2 and 7-10 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 2 requires “the binder contains a solid solvent containing two or more hydroxyl groups and having 8 to 10 carbon atoms, and a liquid solvent” and dependent claim 9 requires the brazing paste to contain “any one or more of 2,5-dimethyl-2,5-hexanediol, trimethylolpropane, and neopentyl glycol as the solid solvent of the binder” (emphasis respectfully added for clarity of the record). However, trimethylolpropane and neopentyl glycol do not contain 8 to 10 carbon atoms. The metes and bounds of the claim are indefinite because it is unclear what features the solid solvent must possess. Examiner considered that, perhaps, claim 2 intended to refer to the liquid solvent having 8 to 10 carbon atoms but, after considering dependent claim 10, terpineol has C10 while isobornyl cyclohexanol has C16. Thus, Examiner cannot determine the scope of the claims. In the interest of furthering prosecution, Examiner has construed the claim such that 1) claim 2 requires a binder component that has C8 to C10 and 2) at least one species from each of claims 9 and 10 are required to meet those individual claims as presented but not necessarily having C8 to C10. If Applicant insists that the solid solvent binder must have 8 to 10 carbon atoms than any species must comply with that limitation (i.e., trimethylolpropane and neopentyl glycol cannot be the solid solvent species because they do not have 8 to 10 carbon atoms).
The indefiniteness rejection extends to claims 7 and 8 as well due to their dependency from claim 2.
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.
Claims 2 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dersham et al. (U.S. 5,045,127).
Regarding claim 2, Dersham et al. (hereinafter “Dersham”) teaches a water washable soldering paste (meeting BRI of claimed ‘brazing paste’) as follows:
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As it applies to the claim features, Dersham’s example 1 includes 45 kg of Sn:Pb solder (meeting claimed brazing material in an amount of 80% by mass or more and 95% by mass or less” because the 45 kg Sn:Pb brazing material and 5 kg solution = 50 kg total brazing paste where 45 kg brazing material /50 kg total brazing paste = 90% of the brazing material) and 5 kg of the solution (meeting claimed binder in an amount of 5% or more and 20% by mass or less because the 5 kg solution / 50 kg total brazing paste = 10% binder).
The solution (i.e. binder) includes neopentyl glycol and terpineol which meet the claimed binder where neopentyl glycol has 5 carbon atoms and terpineol has 10 carbon atoms. Please note the 112b rejection above.
Additionally, Dersham’s example 1 satisfies the alternative limitation “(2) when the binder contains a thixotropic agent, the thixotropic agent is contained in an amount of 11% by mass or less with respect to a total of the binder” because either of diethylmalonic acid and/or tetramethylammonium hydroxide solution, present in 5.0 and 2.5% respectively and/or at a maximum combination of 7.5%, would meet the BRI of ‘thixotropic agent’ as claimed.
See at least Col. 5 lines 6-19 which identifies diethylmalonic acid as an auxiliary fluxing agent that must volatilize completely during reflow and Col. 5 lines 63-68 which states that the combination of the auxiliary fluxing agent and quat ammonium hydroxide fluxing agent eliminates any residue problem.
Thus, as the diethylmalonic acid and/or tetramethylammonium hydroxide solution would necessarily impact the viscosity of the paste as well as providing adequate reflow without residue, it is reasonable to construe either or both of these materials as meeting the claimed ‘thixotropic agent’.
Regarding claim 7, Dersham teaches the brazing paste as applied to claim 2 above and the brazing material contains Sn and Pb which are metals and Example 1 does not include boric acid and borax.
As to the claim feature requiring ‘an oxygen concentration in the metal is 1000 ppm or less, Dersham is silent.
However, it is prima facie expected that the Sn/Pb metals would possess an oxygen concentration of 1000 ppm or less absent evidence to the contrary because of the substantial similarity of the composition of Dersham to that instantly claimed.
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Additionally, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Regarding claim 8, Dersham teaches the brazing paste as applied to claim 2 above but is silent to the paste having a TG residue at 250C when being measured at a temperature increase rate of 10C/min from 25C to 450C is 0% by mass or more and 1% by mass or less.
However, it is prima facie expected that the brazing paste of Dersham would possess a TG residue at 250C when being measured at a temperature increase rate of 10C/min from 25C to 450C is 0% by mass or more and 1% by mass or less because of the substantial similarity of the composition of Dersham to that instantly claimed.
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Additionally, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Regarding claim 9, Dersham teaches the brazing paste as applied to claim 2 above and contains neopentyl glycol as the solid solvent of the binder (Example 1).
Regarding claim 10, Dersham teaches the brazing paste as applied to claim 2 and contains terpineol as the liquid solvent of the binder (Example 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Elmgren et al. (U.S. 4,919,729) directed to a solder paste having 2,5 hexanediol-2,5-dimethyl used as a binder (Col. 5 line 68).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738