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
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant’s election without traverse of Group I, claims 1 – 5 in the reply filed on 12/24/2025 is acknowledged. Claims 6 – 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Claim Rejections – U.S.C. §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 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 1 and 3 – 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isshiki (JP2014/111800, cited with the IDS on 07/27/2023, using espacenet translation provided with the OA on 12/17/2025).
Regarding claim 1, Isshiki teaches a metal fine paste composition for bonding metal members [0013], meeting the claimed limitation of a bonding a paste. Isshiki teaches an example that contains copper metal particles, terpineol as a dispersion medium (meeting the claimed solvent), and a dispersant of DISPERBYK-2020 that contains a phosphate ester [0127], meeting the claimed limitation of an additive containing phosphate ester [0193, example 28].
Wherein the particles are provided in 100 parts, the dispersant at 4 parts and the solvent/dispersion medium at 15 parts. As such, the dispersant containing phosphate ester (interpreted as the additive) would be ~3.3% based on 4 parts of the 119 parts total, meeting the claimed limitation.
Regarding claim 3, Isshiki teaches the invention as applied in claim 1. Isshiki teaches the dispersion medium, specifically terpineol, is present at 15 parts (based on a total of 119 parts total) [0193]. Therefore, the dispersion medium (interpreted as the claimed solvent) is present at ~12.6%, meeting the claimed limitation.
Regarding claim 4, Isshiki teaches the invention as applied in claim 1. Isshiki teaches that the copper particles possess a hexanoic acid coating [0195], meeting the claimed limitation of an organic protective film (i.e. the acid being protective from oxidation).
Claim Rejections – U.S.C. §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, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Isshiki (JP2014/111800, cited with the IDS on 07/27/2023, using espacenet translation provided with the OA on 12/17/2025), as applied to claim 1 above.
Regarding claim 2, Isshiki teaches the invention as applied above in claim 1. Isshiki teaches that the polymeric dispersant (interpreted as the additive containing a phosphate ester) can have an average molecular weight of at least 1000 [0045], which overlaps with the claimed range.
It would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 5, Isshiki teaches the invention as applied above in claim 1. Isshiki teaches that the microparticles, which can be copper, can have an average size range of 0.005 – 0.2 µm [0025], which overlaps with the claimed range.
It would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP2018206532 – Paste composition for joining with overlapping in size copper particles, coating, and polymeric dispersant with overlapping MW
JP2016148104 – Paste composition for joining with fine copper particles, coating, thermoplastic resin and polymeric dispersant
JP2016079448 – Mixture of microparticles and nanoparticles, solvent and polymeric dispersant
WO2016087820 – Conductive paste composition with organic medium containing phosphate ester with overlapping MW
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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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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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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