DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse to the restriction requirement mailed on 1/22/26 of Group I, in the reply filed on 3/22/26 was acknowledged in a previous office action. Claims 10-18 are withdrawn.
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.
Claim(s) 1-9 and 19-20 is/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 1 recites the limitation “ ”. The metes and bounds of the claimed limitation can not be determined for the following reasons:
Claim Interpretation
The Office will use the following interpretations:
The limitation “ultra-thin” will be interpreted to read only on the encompassed range in claim 1: 5 – 1000 micrometers
The applicant is hereby notified that the examiner is treating claims 1-9 as "product-by-process” claims. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.” (See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), and also see MPEP 2113).
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. (See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) and also see MPEP 2113).
Claim 1 is directed to a product/device (i.e. an ultra-thin soldering gasket), but it recites the process limitation “the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure.” The process of forming a solder layer by “uniformly coating a solder liquid to the surface of the internal support structure” does not result in any distinct structural characteristic to the solder layer, because while it requires uniformly coating a solder liquid to the surface of the internal support structure, it does not require what the liquid does after that uniformly coating, so it could move anywhere and have any geometry. The liquid solder could be uniform or non-uniform in the final device. Thus, the limitation “wherein the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure, and the solder layer has a lower melting point than the internal support structure” will be treated as “wherein the solder layer
Claim 1 is directed to a product/device (i.e. an ultra-thin soldering gasket), but it recites the process limitation “the perforated support sheet is formed by opening holes on an imperforate support sheet, a hole diameter of the hole is less than 200 micrometers, and a shape of the hole is a triangle, a square, a rectangle, a hexagon or an irregular shape.” The process of forming “opening” [i.e. forming] holes on an imperforate support sheet… does not result in any distinct structural characteristic to the sheet, because the claim does not specify any limitation on the geometry (size, shape) or distribution of the holes or of the sheet overall. Furthermore, the opening of holes, the diameter of the hole[s], and the shape of the hole[s] are not limited in the actual structure of the sheet, because the diameter and shape are only claimed during the “opening” of the holes, and further processes can be performed that change the diameter and/or shape. Thus, the limitation “the perforated support sheet is formed by opening holes on an imperforate support sheet, a hole diameter of the hole is less than 200 micrometers, and a shape of the hole is a triangle, a square, a rectangle, a hexagon or an irregular shape” will be treated as “the perforated support sheet is
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. (See In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983)).
Also note the use of 102/103 rejections for product-by-process claims has been approved by the courts. (See In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972), and also see MPEP 2113).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102, some of which 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claim(s) 1-2, 4, 8-9, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by CN 107486651 (hereinafter “Wang”) (see copy thereof provided by the Applicant on 6/16/23; reference will hereinafter be made to the machine-generated English translation thereof provided by the Office on 1/22/26).
Wang teaches:
1. An ultra-thin soldering gasket (see e.g. “foamed metal composite solder piece” having a “foam metal skeleton”, see e.g. “BACKGROUND OF THE INVENTION”), comprising
an internal support structure (“metal skeleton”, see e.g. “SUMMARY OF THE INVENTION” section 1) and
a solder layer (“low melting point solder metal”, see e.g. “SUMMARY OF THE INVENTION” section 2) which covers the surface of the internal support structure (see e.g. “completely filled with a low-melting-point solder metal… “SUMMARY OF THE INVENTION” section 2),
wherein
the solder layer is formed by uniformly coating a solder liquid to the surface of the internal support structure (see claim interpretation, above; also see e.g. “immersing the treated foam metal skeleton into a molten solder metal”, “SUMMARY OF THE INVENTION” section 2), and
the solder layer has a lower melting point than the internal support structure (the solder has a “low-melting point” and is molten at the time when the metal skeleton is immersed therein, hence the solder has a lower melting point than the metal skeleton, which does not melt during the immersion),
wherein the ultra-thin soldering gasket has a flat structure (see “flat”, “flat-plate”, “solder sheet” throughout; see e.g. second embodiment),
a single-layer thickness of the ultra-thin soldering gasket is 5-1000 micrometers (see e.g. embodiment 3, wherein the foamed nickel internal support structure is 0.2 mm initially, and is later 120 micrometers after being further flattened by rolling),
wherein the support sheet is an imperforate support sheet or the support sheet is a perforated support sheet, and the perforated support sheet is formed by opening holes on an imperforate support sheet (see claimed interpretation section above; see “foamed metal” and “foam metal matrix”, having “pores”), the perforated support sheet is formed by opening holes on an imperforate support sheet, a hole diameter of the hole is less than 200 µm, and a shape of the hole is a triangle, a square, a rectangle, a hexagon or an irregular shape (see claimed interpretation section above, wherein due to the product-by-process limitation, the diameter and shape are not required in the device; furthermore, pores in a foam are irregularly shaped).
2. The ultra-thin soldering gasket according to claim 1, wherein the internal support structure is a flat support sheet (see “flat”, “flat-plate”, “solder sheet” throughout; see e.g. second embodiment).
4. The ultra-thin soldering gasket according to claim 1, wherein a material of the internal support structure is metal (see e.g. copper, embodiment 1; nickel, embodiment 3).
8. The ultra-thin soldering gasket according to claim 2, wherein the support sheet is a mesh support sheet or a continuous support structure (see “foamed metal” and “foam metal matrix”, having “pores”).
9. The ultra-thin soldering gasket according to claim 1, wherein a solder of the solder layer (see e.g. “low-melting-point solder material is selected from one of tin, a tin-based solder, indium, an indium-based solder, gallium, a gallium-based solder, a tin-bismuth solder, a tin-indium solder and other soldering materials (see many instances reading hereon, such as “Sn-Bi alloy”, etc.).
19. The ultra-thin soldering gasket according to claim 2, wherein a thickness of the support sheet is 3-450 µm (see embodiment 3, wherein the foamed nickel internal support structure is 0.2 mm initially, and is later 120 micrometers after being further flattened by rolling).
20. The ultra-thin soldering gasket according to claim 4, wherein the material of the internal support structure is one of copper, copper alloy, nickel alloy, iron alloy, iron-nickel alloy, iron-nickel-cobalt alloy and stainless steel (see e.g. copper, embodiment 1; nickel, embodiment 3).
Claim(s) 1-2, 4, 8-9, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 107486651 (hereinafter “Wang”) (see copy thereof provided by the Applicant on 6/16/23; reference will hereinafter be made to the machine-generated English translation thereof provided by the Office on 1/22/26) in view of US 2020/0139490 A1 (“Strogies”) and/or US 2002/0197530 A1 (“Tani”).
Claims 1-2, 4, 8-9, and 19-20 were rejected over Wang, above.
Furthermore, because claim 1 comprises an “or” limitation and product-by-process limitations, these claims are obvious in view of Strogies and/or Tani.
While Wang teaches the limitation “wherein the support sheet is an imperforate support sheet or the support sheet is a perforated support sheet…” as discussed above, the first option (imperforate sheet) is not taught in Wang, but is obvious over Strogies.
Strogies teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Wang wherein the support sheet is an imperforate support sheet (see e.g. Fig. 1 and e.g. para 9-17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Strogies to the invention of Wang. The motivation to do so is that the combination produces the predictable results of forming a solder preform by applying metal particles in a paste onto a metal foil by e.g. screen printing (see e.g. para 25), the metal foils being large and able to be cut into the desired size by e.g. stamping or laser cutting (see e.g. para 26).
Applicant has not disclosed that the claimed shape (“imperforate” shape) is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical. (See Applicant’s specification, e.g. para 14-17, 50, etc., wherein the support sheet can be perforated or imperforate, could be any metal, could be a mesh, etc.) It has been found that mere changes in the shape of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See MPEP 2144.04(IV)(B), In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range.
Furthermore, while Wang teaches the limitation “a shape of the hole is a triangle, a square, a rectangle, a hexagon or an irregular shape (pores in a foam are irregularly shaped)”, and while Wang teaches the limitation “wherein a hole diameter of the hole is less than 200 micrometers” due to the product-by-process limitation, providing a hole diameter of less than 200 micrometers is also obvious in view of Tani.
Tani teaches and/or would have suggested as obvious to one of ordinary skill in the art at the time of invention, in combination with Wang wherein a hole diameter of the hole is less than 200 micrometers (see e.g. para 196).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the invention of Tani to the invention of Wang. The motivation to do so is that the combination produces the predictable results of using the foamed nickel material (one example used by Wang) of a known density to have an average pore size of 100 micrometers (see e.g. para 196).
Applicant has not disclosed that the claimed shape is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical. (See Applicant’s specification, e.g. para 14-17, 50, etc., wherein the support sheet can be perforated or imperforate, could be any metal, could be a mesh, etc.) It has been found that mere changes in the shape of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See MPEP 2144.04(IV)(B), In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range.
Applicant has not disclosed that the claimed size is for a particular unobvious purpose, produces an unexpected result, or is otherwise critical (See Applicant’s specification, e.g. para 14-17, 50, etc., wherein the support sheet can be perforated or imperforate, could be any metal, could be a mesh, etc., so pores are not even necessary). It has been found that mere changes in the size of an object, lacking any convincing proof of criticality or unobviousness thereof, is not sufficient for patentability. See e.g. MPEP 2144.04; in re Rose, F.3d 459, 105 USPQ 237 (CCPA 1955); in re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984);
To overcome a prima facie case of obviousness, Applicant must show factual evidence that the particular range is critical or achieves unexpected results relative to the prior art range. See e.g. MPEP 716.02(b); In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant's arguments with respect to the pending claims have been considered but are not persuasive.
Applicant argues (remarks, 7/3/26, pages 6-8) individually against the references and ignores the product-by-process discussion from the previous office action that is maintained herein.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Conclusion / Finality
Applicant's amendment changed the scope of the claims and 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 extension fee 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 date of this final action.
Conclusion / Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Parendo who can be contacted by phone at (571) 270-5030 or by direct fax at (571) 270-6030. The examiner can normally be reached Monday-Friday from 9 am to 4 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Billy Kraig, can be reached at (571) 272-8660. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Parendo/Primary Examiner, Art Unit 2896
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