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/Restriction
Applicant’s election without traverse of Species A, claims 21-22 and 24-26 in the reply filed on 6/23/2026 is acknowledged.
Claims 23 and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/23/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, Application No. 62/583,271, 16/022,330, and 17/462,064, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
‘271, ‘330, and ‘064 do not provide any disclosure towards or support for the upper portion of the nickel range in claim 21, particularly, the claim recites “0.01 to 0.2 wt.% nickel;” however, the priority documents only ever disclose nickel in the range of “0.01 to 0.1 wt. %,” such that the nickel range above 0.1 wt.% up to 0.2 wt.% is not supported.
The earliest effective filing date afforded to the instant claim 21, and the dependent claims wherein the broader nickel range persists therethrough (claims 22-25 and 27), is the filing date of the instant, non-provisional application of 06/30/2023.
The earliest effective filing date afforded to the instant claim 26, which includes a nickel content within the range supported by the disclosures the priority documents, is the filing date of the provisional application 62/583,271 of 11/08/2017.
Specification
The disclosure is objected to because of the following informalities:
[0039] "...the appearance shown in the figures is one of many ornamental appearances that can be employed to achieve the stated functions of the apparatus," refers to an apparatus in the figures; however, there is no apparatus in the figures.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
Claims 217 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 claims contain 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 inventors, at the time the application was filed, had possession of the claimed invention.
Claim 21 contains the following new matter “…to 0.2 wt.% nickel,” as from the instant disclosure, it is not clear that Applicant had possession of a solder alloy as claimed containing nickel in an amount greater than 0.1 wt.% and up to 0.2 wt.%. The specification only provides nickel in amounts within the range of “0.01 to 0.1 wt. %” ([0005-0007, 0009-0010, 0046-0047, 0051-0052, 0056], Tables 2-3 and 5-7). With respect to changing numerical range limitations, consideration is made to ranges one skilled in the art would consider inherently supported by the original disclosure; however, the new claim limitation of “…to 0.2 wt.% nickel” does not the meet the description requirement as the claim reads on embodiments outside of the broadest disclosed Ni range of 0.01-0.1 wt.%. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2163.05(III).
Claims 22-25 and 27 are rejected by virtue of their dependency on claim 21 and the new matter persisting therethrough.
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 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.
12. 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.
Claim(s) 21-22 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over JP6119911B1 (hereinafter “JP911”) in view of Hagio et al. (JP2011251310A, hereinafter referred to as "Hagio"). The Examiner is using the machine translations of JP911 and Hagio provided with the IDS by Applicant.
Regarding claims 21, 22, 24, 25, and 26, JP911 teaches a solder alloy comprising the following composition (JP911, pg. 13, paragraph 12 and pg. 14, all):
Element
Instant claims (wt.%)
JP911 (mass%)
Relationship
Cu
Claims 21 and 22: 0.5-0.9
0.1-1.0
Preferred: 0.5-0.8
Preferred within
Claims 24 and 25: 0.7
Bi
Claims 21 and 22: 1.0-3.5
0.1-2.0
Preferred: 1.0-1.7
Preferred within
Claims 24 and 25: 1.5
Co
Claims 21 and 22: 0.02-0.08
0.003-0.05
Preferred: 0.01-0.02
Overlapping
Claim 24: 0.04
Claim 25: 0.05
Sb
Claims 21 and 22:0.02-0.09
-
-
Claims 24 and 25: 0.05
Ni
Claims 21-22/24-25: 0.01-0.2
0.01-0.2
Preferred: 0.03-0.10
Preferred within
Claim 26: 0.05
Optional Ge
0.001-0.01
0.006-0.09
Preferred: 0.008-0.01
Preferred within
Sn and impurities
balance
balance
-
The ranges of Cu, Bi, Co, Ni, optional Ge, and Sn either overlap or fall within the claimed ranges of claims 21, 22, 24, 25, and 26. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Given that JP911 does not explicitly disclose the inclusion of Pb and Ag, the solder alloy would necessarily be lead-free and silver-free as presently claimed.
However, JP911 does not explicitly disclose including 0.02-0.09 wt.% antimony in the solder alloy.
With respect to the difference, Hagio teaches a lead-free solder alloy which includes 0.05-0.25 mass% antimony (Hagio, [0006]). Moreover, Hagio does not teach including silver in the solder alloy composition (Hagio, [0006]).
As Hagio expressly teaches, antimony is added to improve the deformation resistance of the solder alloy while maintaining the flexibility (Hagio, [0011]).
JP911 and Hagio are analogous art as they are both drawn to a lead-free, silver-free solder alloy composition (JP911, pg. 13, paragraph 12; Hagio, [0006]).
In light of the motivation to add antimony to a lead-free, silver-free solder alloy as taught in Hagio above, it therefore would have been obvious to one of ordinary skill in the art to include 0.05-0.25 mass% Sb in the solder alloy composition of JP911 in order to improve the deformation resistance of the solder alloy while maintaining the flexibility (Hagio, [0011]), and thereby arrive at the present invention.
The amount of antimony of JP911 in view of Hagio overlaps with the amount of antimony required in claims 21-22 and 24-25. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 21-22 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura et al. (US 2020/0140975, hereinafter "Nishimura").
Regarding claims 21-22 and 24-25, Nishimura teaches a lead-free solder alloy containing Sn, Cu, Ni, Bi, and Ge, and may further contain Sb and Co, in the following amounts (claims 8-9):
Element
Instant claims (wt.%)
Nishimura Ranges (wt.%)
Relationship
Cu
Claims 21 and 22: 0.5-0.9
0.1-2.0
Encompassing
Claims 24 and 25: 0.7
Bi
Claims 21 and 22: 1.0-3.5
0.1 to <8
Encompassing
Claims 24 and 25: 1.5
Co
Claims 21 and 22: 0.02-0.08
>0 to 0.1
Encompassing
Claim 24: 0.04
Claim 25: 0.05
Sb
Claims 21 and 22:0.02-0.09
>0 to <10
Encompassing
Claims 24 and 25: 0.05
Ni
0.01-0.2
0.05-0.5
Overlapping
Optional Ge
0.001-0.01
0.006-0.10
Overlapping
Sn and impurities
balance
balance
-
Overlapping and encompassing ranges are prima facie obviousness. See MPEP 2144.05(I). It is further noted that the solder alloy of Nishimura does not require an Ag content, meeting a silver-free solder alloy as claimed.
Claims 21-22 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hagio et al. (JP2011251310A, hereinafter referred to as "Hagio"). The English language translation of Hagio provided with the IDS filed by Applicant.
Regarding claims 21, 22, 24, 25, and 26, Hagio teaches a lead-free solder alloy containing [0006]:
Element
Instant claims (wt.%)
Hagio Ranges (mass%)
Relationship
Cu
Claims 21 and 22: 0.5-0.9
0-1.5 mass%
Encompassing
Claims 24 and 25: 0.7
Bi
Claims 21 and 22: 1.0-3.5
0.1-1.0 mass%
Overlapping
Claims 24 and 25: 1.5
Co
Claims 21 and 22: 0.02-0.08
0-0.5 mass%
Encompassing
Claim 24: 0.04
Claim 25: 0.05
Sb
Claims 21 and 22:0.02-0.09
0.05-0.25
Overlapping
Claims 24 and 25: 0.05
Ni
Claims 21-22/24-25: 0.01-0.2
0-0.5
Encompassing
Claim 26: 0.05
Optional Ge
0.001-0.01
-
-
Sn and impurities
balance
balance
-
Overlapping and encompassing ranges are prima facie obviousness. See MPEP 2144.05(I). It is further noted that the solder alloy of Hagio does not require an Ag content, meeting a silver-free solder alloy as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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