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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2026 has been entered.
Status of Claims
Claim 1 is currently amended, Claims 2-4, 6, and 7 are as previously presented, Claims 5 and 10 are cancelled, and Claims 8 and 9 are as originally filed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sekhar (US 5,127,969).
Sekhar teaches a solder composition with containing at least tin (column 2, line 52) and particles (line 56). The particles have a higher Young’s modulus and lower linear expansion coefficient than the Sn phase based on the examples of SiC and Al2O3 (lines 56-58). The particles occupy 1-60% by volume (line 55), and they have a size of 1-60 microns (column 4, lines 4 and 5). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Regarding Claim 2, the particles comprise C and O (column 2, line 58).
Regarding Claim 3, the particles comprise C (column 2, line 58).
Regarding Claim 4, Sekhar teaches SiC (column 2, line 58).
Regarding Claim 6, the linear expansion coefficient of alumina is 8.1 [Wingdings font/0xFB] 10-6/°C (page 2) and silicon carbide is 2.77 [Wingdings font/0xFB] 10-6/°C (page 6) as evidenced by the Engineering Toolbox. Based on applicant’s disclosure in Table 2, the linear expansion coefficient of a tin alloy is 21 ppm/°C.
Regarding Claim 7, the Young’s modulus of alumina is 385-392 GPa as evidenced by Engineering Materials; silicon carbide is 435-460 GPa as evidenced by Zinkle et al. Based on applicant’s disclosure in Table 2, the Young’s modulus of a tin alloy is 47.9 GPa.
Regarding Claim 8, Sekhar teaches the solder does not have to contain lead.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ma et al (US 2003/0141592 A1) in view of Sekhar.
Ma et al teaches a silicon wafer for microelectronic devices [0001-0002] with a solder interconnect applied to metal terminal pads [0006]. However, Ma et al does not teach the solder composition as claimed.
Sekhar is applied as discussed above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the solder composition of Sekhar in Ma et al, since Sekhar teaches improved creep strength, modulus of elasticity, ultimate tensile strength, wear resistance, freezing range, usable service temperature, thermal conductivity and electrical conductivity, and a lower coefficient of thermal expansion (column 2, lines 29-33).
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive. Applicant argues that Sekhar discloses a preferred range in column 4, lines 40-43. This is not persuasive because patents are relevant as prior art for all they contain. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Additionally, nonpreferred and alternative embodiments constitute prior art; disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123. Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range or by showing that the art, in any material respect, teaches away from the claimed invention. See MPEP § 2144.05 III.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733