Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 04/16/26 has been entered. Claims 1 – 12 remain pending. Claims 1 – 5 remain under examination. Claims 6 – 12 remain withdrawn.
Claim Rejections – U.S.C. §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.
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.
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.
Claims 1 – 3 are rejected under 35 U.S.C. 103 as being unpatentable over Anthony (US2019/0143453)
Regarding claims 1 and 3, Anthony teaches a composition for depositing and bonding material [0007, 0008]. The composition includes:
A solvent-based vehicle in a range of 1 – 50 wt% [0013], which overlaps with the claimed range of claim 3.
Metal nanoparticles including copper nanoparticles [0034]
That oleth-10 phosphate can be included as an anti-kogation [0016], meeting the claimed limitation of phosphate ester and oleth-n phosphate (with n being an integer), in a range of 0.1 – 1 wt%, which overlaps with the claimed range.
With regards to the overlapping ranges taught, “In the case where the claimed ranges "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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Regarding claim 2, Anthony teaches the invention as applied in claim 1. Anthony teaches that oleth-10 phosphate can be included [0016], wherein oleth-10 phosphate is explicitly listed as having a molecular weight between 1000 – 2000 in the instant invention, Table 1. As such, there is a reasonable expectation to an ordinarily skilled artisan that the oleth-10 phosphate of Anthony would possess a molecular weight that met the claimed range.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Anthony (US2019/0143453), as applied to claim 1, in further view of Yasuda (JP2010/189681, using espacenet translation)
Regarding claim 4, Anthony teaches the invention as applied in claim 1. Anthony does not expressly teach that the copper nanoparticles have an organic coating derived from citric acid.
Yasuda provides teachings directed to copper nanoparticles which are used in a joining process [0001]. Yasuda discloses providing a protective film on said copper nanoparticles in order to reduce/suppress oxidation thereof [0010], including using citric acid to form an organic coating film on the surface [0011], meeting the claimed limitation of claim 4. Yasuda discloses that preventing the oxidation of the copper nanoparticles improves their bonding properties [0009] as well as improving their dispersibility [0023].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the metal nanoparticles of Anthony and modified them to include a protective organic film derived from citric acid, as disclosed by Yasuda. Yasuda is directed to metal (copper) nanoparticles used in joining/bonding processes and as such, the teachings of Yasuda would be considered pertinent to the disclosure of Anthony (which uses nanoparticles in a fluid for joining in additive manufacturing). Moreover, Yasuda teaches that providing a protective film derived from citric acid suppresses oxidation which results in improved bonding properties and dispersibility. These would be benefits that an ordinarily skilled artisan would appreciate in the disclosure of Anthony. Moreover, because Anthony also discloses using copper nanoparticles (which are intended to help with bonding) an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Yasuda to Anthony.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Anthony (US2019/0143453), as applied to claim 1, in further view of Erikson (US2021/1205879)
Regarding claim 5, Anthony teaches the invention as applied in claim 1. Anthony teaches that the copper particles are nanoparticles (i.e., <1µm), however, Anthony does not expressly teach the size of the nanoparticles.
Erikson teaches a fluid composition including metal nanoparticles to produce bonding in additive manufacturing [0015]. Erikson teaches that the metal nanoparticles can be copper and that said metal nanoparticles can have a d50 size of 0.5 – 200 nm [0047], which overlaps with the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the metal nanoparticles of Anthony and set their size to be in the range disclosed by Erikson. Both Anthony and Erikson are directed to the same field of endeavor of bonding compositions for additive manufacturing, including the use of metal nanoparticles. Therefore, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Anthony and Erikson to achieve predictable results with no change in the respective functions.
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejections. The examiner agrees that Isshiki (JP2014111800) does not teach including laureth-n phosphate, oleth-n phosphate, or steareth-n phosphate. Therefore, the previous rejections are withdrawn.
However, upon further consideration, a new rejection is made of:
Claims 1 – 3 under 35 U.S.C. 103 as being unpatentable over Anthony (US2019/0143453)
Claim 4 under 35 U.S.C. 103 as being unpatentable over Anthony (US2019/0143453), as applied to claim 1, in further view of Yasuda (JP2010/189681, using espacenet translation)
Claim 5 under 35 U.S.C. 103 as being unpatentable over Anthony (US2019/0143453), as applied to claim 1, in further view of Erikson (US2021/1205879)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2019/0143453 – Bonding fluid with metal nanoparticles of copper
Conclusion
Applicant's amendment 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (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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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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